Canada has become the first G7 country to legalize nationwide the purchase and use of recreational cannabis. On June 19, 2018, the Canadian Senate passed the final version of An Act respecting cannabis and to amend the Controlled Drugs and Substances Act, the Criminal Code and other Acts (the “Cannabis Act”), also known as Bill C-45, by a vote of 52 to 29, ending Canada's 95-year prohibition on cannabis. The law will come into force on October 17, 2018. Regulations under the Act were published on July 11, 2018.
Since the proposed legalization of recreational cannabis was announced, the market capitalization of licensed producers in Canada has grown exponentially on the expectation that the North American legal cannabis market will reach an estimated $25 billion by 2021. The team at Bereskin & Parr has a breadth of experience in helping clients in this burgeoning industry protect their intellectual property. We have been keeping our clients abreast of regulations as they are released. The following are some of the ways our team has assisted clients.
PATENTS: In Canada, while plants themselves cannot be patented, patents can be obtained for: (i) a new plant cell or gene, which effectively provides patent protection for the plant itself; (ii) new and non-obvious uses of old plants; (iii) novel methods of making the active ingredients in cannabis, as well as formulations relating to same; and (iv) novel methods of producing cannabis in plants and other organisms.
Patents can also be obtained for inventive machines and methods for growing or processing cannabis to produce consumable products such as dry flower, compressed leaf and concentrates. Innovative vaporizers, controlled dose systems and other delivery devices can also be protected with patents.
PLANT BREEDERS’ RIGHTS (also known as Plant Variety Rights): These rights can be obtained instead of, or in addition to, patent protection. Plant Breeders’ Rights confer an exclusive right to sell, produce and reproduce, import and export propagating material of a new plant variety.
INDUSTRIAL DESIGNS (also known as utility or design patents): Industrial designs protect novel and non-functional, esthetic aspects of products or their packaging. Industrial designs can protect the shaping of products, such as a novel shape of foods or other edible products, novel packaging, or ancillary products for adult and medical use of cannabis such as delivery devices.
TRADEMARKS: Between January 2016 and January 2018, the number of annual filings to protect cannabis has quadrupled. The Cannabis Act restricts certain types of marks. For example, prohibited under the Act are marks for cannabis products that consist of a person, character or animal, whether or fictional or real, and marks that appeal to minors. Our trademark specialists can provide opinions on the availability of marks on an increasingly crowded Register and can advise of potential issues before filing.
PLAIN PACKAGING: Both the Cannabis Act and proposals for regulations address packaging limitations, which may include restrictions on brand selection, as well as brand name font, size and colour. Our team is familiar with the proposed restrictions, and has already participated in consultations on behalf of brand owner groups. We will be monitoring further limitations, and can assist with packaging design and approval.
REGULATORY, ADVERTISING & MARKETING: The constitutional division of powers means that both federal and provincial governments will regulate the labeling, advertising and sale of cannabis products. Our team is following the passage of the Cannabis Act, and are waiting for more specific regulations dealing with “information promotion” of cannabis. We are also following provincial laws dealing with such issues as dispensing and minimum age requirements.
IN-SOURCING AGREEMENTS: Our team has experience drafting agreements for various players in the cannabis industry including licensed producers and cannabis suppliers, device manufacturers and retail vendors.