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Dr. Joe I. Wyse
Head of Patent Dept.
Monetizing Medical Cannabis with the IP Toolbox
OTHERS (that we know..)
© Proprietary & Confidential
6Major Medical Cannabis companies
© Proprietary & Confidential
7
G.W.Pharma
GW Pharmaceuticals 1998 listed on the NASDAQ Global Market (GWPH) and London Stock Exchange.
Product portfolio: cannabinoid prescription Sativex® Oromucosal Spray & Epidiolex® for childhood epilepsy.
© Proprietary & Confidential
8
© Proprietary & Confidential
9
”Our intellectual property portfolio at September 30, 2015, includes 60 patent families
with issued and/or pending claims directed to:
• Plants
• Plant extracts
• extraction technology
• pharmaceutical formulations
• drug delivery
• therapeutic uses of cannabinoids,
• plant variety rights
• know-how & trade secrets.
IP portfolio comprises 53 pending patent applications worldwide.
We seek patent protection for the technology, trademarks, trade secrets, know-how ”.
Approx. cost of Patents : <<10 million USD
Form 20-F
Annual Report for Foreign Private Issuers
Filed Dec 7, 2015, GW Pharma
© Proprietary & Confidential
10
Proactive IP portfolio:
1. Proactive technology protection: having a multi-
dimensional defensive patents portfolio.
2. Proactive market dominance:
a. having a multi-dimensional offensive patents
portfolio;
b. acquiring IP dominancy in relevant* territories.
3. Effective IP-TOOLBOX-ing
a. Integrating technology protection; utility patents,
design patents & utility models-patents;
b. Integrating trade-dress protection: patents,
copyrights & trademarks.
* Relevant to both strategic partners (e.g., big pharma) & competitors.
© Proprietary & Confidential
11
OFFENSIVE Utility PATENTS
Monetizing Medical Cannabis with the IP Toolbox
© Proprietary & Confidential
12
A pharmaceutical formulation for use in administration of cannabinoids via a mucosal surface,
the formulation comprising tetrahydrocannabinol (THC) and cannabidiol (CBD) and a matrix comprising
at least one agent which is both a self-emulsifier and a cannabinoid solubilizer,
said agent when hydrated forming an emulsion containing said THC and CBD which is capable of
adhering reversibly to a mucosal surface and allowing controlled release of the THC and CBD.
US6730330 2004/05/04
EXTENDING Formulation Protections
© Proprietary & Confidential
13
A liquid pharmaceutical formulation, for use in the administration of a lipophilic medicament via a
mucosal surface, comprising:
at least one lipophilic medicament,
a solvent and co-solvent,
wherein the total amount of solvent and co-solvent present in the formulation is greater than 55%
wt/wt of the formulation,
the formulation is absent of a self emulsifying agent and a fluorinated propellant, and
the formulation has a water content of less than 5% and
the formulation is packaged for delivery as a spray,
wherein the lipophilic medicament comprises tetrahydrocannabinol (THC) and cannabidiol (CBD),
wherein the lipophilic medicament is at least one extract from at least one cannabis plant, and
wherein the extract from at least one cannabis plant is a botanical drug substance.
US7709536 2010/05/04
EXTENDING Formulation Protections
© Proprietary & Confidential
14
8,790,719 July 29, 2014
A method of treating a human suffering from a glioma consisting essentially of
administering therapeutically effective amounts of isolated or highly purified
tetrahydrocannabinol and cannabidiol, together with temozolomide to said human to
treat said glioma in said human.
© Proprietary & Confidential
15
Integrating
Utility PATENTS with Design PATENTS
Monetizing Medical Cannabis with the IP Toolbox
© Proprietary & Confidential
16
© Proprietary & Confidential
17
Integrating
Utility PATENTS with Trademarks
Monetizing Medical Cannabis with the IP Toolbox
© Proprietary & Confidential
18
The Viagra patent expired in 2012
© Proprietary & Confidential
19
Integrating
Utility PATENTS with Plant Breeders Rights
Monetizing Medical Cannabis with the IP Toolbox
© Proprietary & Confidential
20
Patents:
Protects: Invention (new gene, breeding process), plants with the
inventive feature are protected.
Suitable for: Biotechnology, complex traits, new breeding processes.
Plant Breeder’s Rights (PBR):
Protects: New variety described by all its phenotypical
characteristics.
Suitable for: Traditional breeding
Not suitable for: protection of new genes, traits, breeding processes.
But note Essentially Derived Varieties (E.D.V.) !!!
Confidential2013
All Rights Reserved
© Proprietary & Confidential
21
Confidential2013
All Rights Reserved
Thank You!
and many thanks to

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JOE WYSE IP TOOLBOX in CannTech

  • 1. Dr. Joe I. Wyse Head of Patent Dept. Monetizing Medical Cannabis with the IP Toolbox
  • 2.
  • 3.
  • 4.
  • 5. OTHERS (that we know..)
  • 6. © Proprietary & Confidential 6Major Medical Cannabis companies
  • 7. © Proprietary & Confidential 7 G.W.Pharma GW Pharmaceuticals 1998 listed on the NASDAQ Global Market (GWPH) and London Stock Exchange. Product portfolio: cannabinoid prescription Sativex® Oromucosal Spray & Epidiolex® for childhood epilepsy.
  • 8. © Proprietary & Confidential 8
  • 9. © Proprietary & Confidential 9 ”Our intellectual property portfolio at September 30, 2015, includes 60 patent families with issued and/or pending claims directed to: • Plants • Plant extracts • extraction technology • pharmaceutical formulations • drug delivery • therapeutic uses of cannabinoids, • plant variety rights • know-how & trade secrets. IP portfolio comprises 53 pending patent applications worldwide. We seek patent protection for the technology, trademarks, trade secrets, know-how ”. Approx. cost of Patents : <<10 million USD Form 20-F Annual Report for Foreign Private Issuers Filed Dec 7, 2015, GW Pharma
  • 10. © Proprietary & Confidential 10 Proactive IP portfolio: 1. Proactive technology protection: having a multi- dimensional defensive patents portfolio. 2. Proactive market dominance: a. having a multi-dimensional offensive patents portfolio; b. acquiring IP dominancy in relevant* territories. 3. Effective IP-TOOLBOX-ing a. Integrating technology protection; utility patents, design patents & utility models-patents; b. Integrating trade-dress protection: patents, copyrights & trademarks. * Relevant to both strategic partners (e.g., big pharma) & competitors.
  • 11. © Proprietary & Confidential 11 OFFENSIVE Utility PATENTS Monetizing Medical Cannabis with the IP Toolbox
  • 12. © Proprietary & Confidential 12 A pharmaceutical formulation for use in administration of cannabinoids via a mucosal surface, the formulation comprising tetrahydrocannabinol (THC) and cannabidiol (CBD) and a matrix comprising at least one agent which is both a self-emulsifier and a cannabinoid solubilizer, said agent when hydrated forming an emulsion containing said THC and CBD which is capable of adhering reversibly to a mucosal surface and allowing controlled release of the THC and CBD. US6730330 2004/05/04 EXTENDING Formulation Protections
  • 13. © Proprietary & Confidential 13 A liquid pharmaceutical formulation, for use in the administration of a lipophilic medicament via a mucosal surface, comprising: at least one lipophilic medicament, a solvent and co-solvent, wherein the total amount of solvent and co-solvent present in the formulation is greater than 55% wt/wt of the formulation, the formulation is absent of a self emulsifying agent and a fluorinated propellant, and the formulation has a water content of less than 5% and the formulation is packaged for delivery as a spray, wherein the lipophilic medicament comprises tetrahydrocannabinol (THC) and cannabidiol (CBD), wherein the lipophilic medicament is at least one extract from at least one cannabis plant, and wherein the extract from at least one cannabis plant is a botanical drug substance. US7709536 2010/05/04 EXTENDING Formulation Protections
  • 14. © Proprietary & Confidential 14 8,790,719 July 29, 2014 A method of treating a human suffering from a glioma consisting essentially of administering therapeutically effective amounts of isolated or highly purified tetrahydrocannabinol and cannabidiol, together with temozolomide to said human to treat said glioma in said human.
  • 15. © Proprietary & Confidential 15 Integrating Utility PATENTS with Design PATENTS Monetizing Medical Cannabis with the IP Toolbox
  • 16. © Proprietary & Confidential 16
  • 17. © Proprietary & Confidential 17 Integrating Utility PATENTS with Trademarks Monetizing Medical Cannabis with the IP Toolbox
  • 18. © Proprietary & Confidential 18 The Viagra patent expired in 2012
  • 19. © Proprietary & Confidential 19 Integrating Utility PATENTS with Plant Breeders Rights Monetizing Medical Cannabis with the IP Toolbox
  • 20. © Proprietary & Confidential 20 Patents: Protects: Invention (new gene, breeding process), plants with the inventive feature are protected. Suitable for: Biotechnology, complex traits, new breeding processes. Plant Breeder’s Rights (PBR): Protects: New variety described by all its phenotypical characteristics. Suitable for: Traditional breeding Not suitable for: protection of new genes, traits, breeding processes. But note Essentially Derived Varieties (E.D.V.) !!! Confidential2013 All Rights Reserved
  • 21. © Proprietary & Confidential 21 Confidential2013 All Rights Reserved Thank You! and many thanks to