Cannabis-related U.S. patents have been issued since at least the mid-1990s. We previously discussed the United Cannabis Corp. v. Pure Hemp Collective Inc. case in a previous blog post, in which a biotechnology company sued a vendor of cannabis extracts for patent infringement. One of the patent’s claims is for a concentrated liquid formulation of tetrahydrocannabinol (“THC”). However, the actual preparation of the formulation would be a violation of the Controlled Substances Act. This begs a question that remains unanswered: could a solely illegal use be grounds to invalidate the claim?
Among other requirements, a patent must disclose a utility for the claimed invention. While the utility requirement is not a high bar, as the patents for a “Method for Exercising a Cat” and a “Method of Swinging on a Swing” amply demonstrate, a court may deem that a patent lacks utility. The classic formulation of the utility requirement dates from the early nineteenth century in Lowell v. Lewis:
The word “useful,” therefore, is incorporated into the act in contradistinction to mischievous or immoral. For instance, a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention.
Subsequent cases held that patents claiming “immoral” devices such as gambling machines lacked utility but by the 1970s there was an about-face. These days, invalidation of a patent claim based solely on immoral utility would likely be an uphill battle.
But what of illegal utility? There appears to be little in the casebooks on this point. However, Whistler Corp. v. Autotronics, Inc., involved radar detectors “the primary and almost exclusive purpose” of which “is to circumvent law enforcement attempts to detect and apprehend those who violate the law.” Despite some misgivings, the Whistler court found that the radar detectors had utility, stating that “[u]nless and until detectors are banned outright, or Congress acts to withdraw patent protection for them, radar detector patentees are entitled to the protection of the patent laws.” Therefore, it appears that a defense of illegal utility may survive if the sole utility is subject to an outright ban such as that of concentrated THC under the Controlled Substances Act.
In United Cannabis, the defendant did not allege illegal utility, choosing instead to focus on more conventional defenses. Therefore, the defense of illegal utility in the context of cannabis patents remains untested until an enterprising defendant gives it a try.
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