In this month’s episode, we’re getting high on innovation with a deep dive into cannabis patents!

As more and more states relax restrictions on both medical and recreational uses of marijuana and hemp, the U.S. cannabis industry is projected to reach $50 billion in sales this year and over $74.6 billion by 2032! This rapid growth is happening despite immense challenges brought on by a complex and conflicting web of legal disparities between federal and state laws. These legal challenges include limited access to financial institutions and the inability to transport products across state lines, but what about patents? THC – the primary psychoactive compound in cannabis – was deemed a Schedule One drug under the Controlled Substances Act of 1970. This is the most restrictive category for drugs in the eyes of the federal government. And unlike most other property rights, patents fall squarely within federal jurisdiction. So what does this mean for inventors in the space hoping to protect their cannabis-related innovations?

** Guest Host: James Gourley **

For the answer, we turned to *the* expert in this space. There have only been five or so cannabis patent infringement cases ever filed in the United States, and our guest host today has worked on two of them. James Gourley is a partner at Carstens, Allen & Gourley, LLP, and a registered patent attorney with the United States Patent and Trademark Office. James served on the Dallas Bar Association's Intellectual Property Section Board before moving to Denver. He is a member of the State Bar of Texas and Colorado and is admitted to practice in the U.S. District Courts for the Northern, Southern, Eastern, and Western Districts of Texas, the District of Colorado, the Fifth Circuit Court of Appeals, and the United States Supreme Court. James has been a pioneer cannabis IP law and brings incredible depth of expertise, based on first-hand experience, to our conversation.

** Episode Overview **

⦿ Cannabis at the molecular level, specifically THC and CBD, and how the subtle differences underscore the complexity of cannabis legality.
⦿ The present legal framework around cannabis and the challenges that come via a patchwork of conflicting state and federal laws.
⦿ Cannabis IP issues surrounding obtaining and asserting both patents and trademarks, including insights from the cases James has personally litigated.
⦿ Patent prosecution strategies to help ensure your rights are enforceable in a federal court.

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If a court stripped away your property rights, wouldn’t you at least want an explanation? The answer is obvious, but the reality is appalling. The practice of revoking patent rights on appeal without explanation has been happening to inventors at the Federal Circuit Court of Appeals (CAFC) at an alarming rate. In over 43% of PTAB cases on appeal at the CAFC, inventors receive a single-word response – “AFFIRMED” – rather than an opinion. This practice is referred to as the application of Rule 36 and, in cases involving the PTAB, amounts to the seizure of property from an administrative agency without any reasoning provided by a constitutionally created Article III court.

Based on the findings of our guests today, who are taking this very issue up with the Supreme Court, Rule 36 violates clear statutory requirements, raises Constitutional questions, and defies a rich history of court precedent. Gene Quinn has said that this Federal Circuit Court practice is “placing America’s inventors under siege,” and friend of the podcast and former Chief Justice of the Federal Circuit, Paul Michel, has called this practice a “dereliction of duty” that “warrants immediate Supreme Court scrutiny.” Our guests this month – Jeff Parker, Amit Vora, and Juliette Fassett – are fighting hard to make that happen.

** Our Guests **

ParkerVision has filed a petition for a writ of certiorari with the Supreme Court and recently submitted a reply brief in an attempt to get the Supreme Court to take up this innovation-crippling practice. In the coming days, the justices are scheduled to discuss the petition in private conference, where they will vote on whether to take the case.

To help us unpack Rule 36 practice and what ParkerVision is hoping to do about it, Dr. Ashley Sloat and I have enlisted the assistance of the three people closest to this case and its implications:

⦿ Jeffrey Parker, CEO of ParkerVision – an absolute pioneer in wireless technology.
⦿ Amit Vora, appellate litigator at Kasowitz Benson Torres, representing ParkerVision in its petition for cert with the Supreme Court.
⦿ Juliette Fassett from the Fair Inventing Fund, advocating for inventors’ rights. Juliette is an inventor herself, with over 30 years of experience building consumer product companies.

** Referenced Links **

⦿ ParkerVision's Cert: https://www.supremecourt.gov/DocketPDF/24/24-518/331105/20241104163210189_No.%2024-_____%20Petition.pdf
⦿ Why Patents Exist w/ Professor Mossoff: https://www.aurorapatents.com/blog/why-patents-exist-with-adam-mossoff

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So, your patent application got rejected. Now what?

In this month’s episode, we’re talking about rejection. Specifically, the type that comes from the patent office in the form of an intimidating sounding three-digit number when your application gets denied by an examiner.

Some time after submitting your application, it goes into a process with the patent office called examination. This is the part of your patent’s prosecution journey where an examiner reviews your application for conformance to technical and legal requirements. If – and usually when – the examiner finds a problem, they will issue an office action that contains specific reasons for the rejection. You then have the opportunity to respond to and overcome the rejection, using various strategies we’ll explore today.

Reasons for rejection fall under four sections of U.S. Statute, Title 35. Sections 101, 102, 103, and 112 dictate that patents must be eligible, useful, novel, nonobvious, and enabled (or properly described). Patents can be rejected or later invalidated if one or more of the claims are determined to be otherwise.

Rejection on the basis of these four statutes is fortunately just the beginning of the delicate process of negotiating this important exchange that has promoted and enabled our innovation economy since the dawn of our country. Patent application rejection is common, expected, and can be used very strategically – but perhaps counterintuitively – to end up with the broadest possible protection, while also making sure there’s something in it for the public!

** Episode Overview **

In today’s episode, Patent Office Relationship Guru Daniel Wright leads a discussion with our all-star patent panel, delving deeply into defining, coping with, and then dealing with patent application rejection. Along the way, Dan and the panel discuss:

⦿ Why patent applications are rejected.
⦿ The specific types of rejection.
⦿ Strategies for how to overcome each, including some wonderful insider insights specifically on how to work with examiners on the human level to overcome rejection.

** Mossoff Minute: Patents Aren't Monopolies **

In this month’s minute, Professor Adam Mossoff debunks the myth that patents in the United States are monopolies that impede innovation and block economic growth.

** Referenced Links **

⦿ Apply to work at Aurora: https://www.aurorapatents.com/careers-patent-agent.html
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent

** Follow Aurora Patents **

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Let us know what you think about this episode!