A Patent Attorney’s Lessons Learned from the Largest Cannabis Patent Litigation to Date

By Avraham Hermon (February 2021)

In December 2020, two large players in the medical cannabis industry butted heads in US District Court (Western District of Texas) when the Canadian cannabis company, Canopy Growth Corporation (“Canopy”), filed a complaint for patent infringement against the UK-based GW Pharmaceuticals PLC (“GW”).

GW is one of the main players in the US and European medical cannabis industry. Their cannabidiol (CBD)-based drug Epidiolex®, was approved in the US by the FDA in 2018 for use in treatment of severe forms of epilepsy, Lennox-Gastaut syndrome and Dravet syndrome, in patients two years of age and older. According to GW’s financial statements, in 2019, they sold $296 million of Epidiolex, thereby accounting for over 95% of their sales. As a result of the high value of allegedly infringing sales, this infringement suit appears to be the highest stakes cannabis-related patent litigation to date.

The patent forming the basis for the infringement complaint is…

The next podcast episode will be released next month.

From the Legal to the Practical:
The Israel Trademark System

A Question & Answer series dealing with legal questions about the Israel Trademark System, rights and obligations, and practicalities.

Series Editor: Aaron Lewin, Israel Attorney at Law, Head of Trademarks at JMB Davis Ben-David

Contributors: Ms. Miriam Samis, Ms. Godiva Grant, Mr. Eviatar Aron and Ms. Daphne Lazar

In this chapter we will deal with a number of important issues regarding the procedure for the registration of trademarks in Israel.

These include information regarding fees and classification scheme used. We will answer questions regarding whether ‘class-wide’ applications are allowed, and whether an applicant is required to have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration.

What does the examination consist of, and are there other grounds under which a mark is ineligible for registration?

Is there a separate or supplemental register on which descriptive marks may be registered?

Is there a use requirement, and how long does it all take?

Do you have any questions? Feel free to email any of the above-listed contributors.

FTO – Part II

By Eviatar Aron, US and Israel Patent Attorney

Your FTO analysis shows there is a high probability that you are infringing a third party patent: What do you do?

In my previous article, I discussed what an FTO analysis is and how it can be used to assist you in avoiding infringing someone else’s intellectual property rights. This time, I will discuss what happens when that FTO analysis shows that there may actually be infringement. 

So now you have a clear picture. If you continue with your activities, you may be accused in a court of law of willful infringement. If you stop your activities, then you will be throwing away your investment in the technology and products that your company has developed. 

So what are your options?