The International Cannabis Bar Association (INCBA) hosted its inaugural Global Cannabis Intellectual Property Symposium in September 2023 in Montreal, Canada. The Symposium convened cannabis IP legal thought leaders and delved into the nuts and bolts of IP, e.g., patents, trademarks, licensing and litigation/disputes, drilling down into the illegality doctrine and other nuances that impact the inconsistent treatment of cannabis IP by governmental agencies and courts. In addition, the summit hosted an informative in-house counsel panel, a session that focused on the science of the plant (for non-scientists), an illuminating presentation on international treaties, and an edifying exposition on the unusual impact of federal illegality on professional responsibility. A hybrid event, attendees were in person at McGill University and on Zoom, and the program included speakers from Canada, Europe, Mexico, United Kingdom, United States, and elsewhere.
The Symposium commenced with a stellar In-House Counsel Round-Up, featuringMichael Sharp (Aurora Cannabis Enterprises), Shabnam Malek (Nuka Enterprises), Henry Bian (Cronos Group), Nick Costanza (Cann Social Tonics), and Craig Abruzzo (Kiva Brands). They discussed: how to develop, grow, and manage an IP portfolio and issues surrounding litigation and other disputes. They also shared what it’s like managing budgets and balancing brand growth and IP protection at the same time. One tip: Be patient and have grace when working with in-house counsel, who manage a myriad of legal topics each and every day.
Next, It All Starts With the Plant featured experts in plant science who provided key facts and insights into the remarkable plant on which the cannabis industry and cannabis law are based. It was an intro-level course about cannabis biology, chemistry, and cultivation to help non-scientists understand the plan that is at the core of our work.Addressing everything in the genus Cannabis Sativa L., the speakers, Dale Hunt (Plant & Planet Law), Dr. Anja Geitman (McGill University), and Brendon Roberts (GanjaPapa Solutions) talked about genetics, terpenes, and more.
(These two sessions are available without CLE/CPD credit on the INCBA YouTube channel: Introductions and In-House Counsel Round-Up and It All Starts with the Plant)
A session dedicated to International Treaties: Budding Opportunities with Cannabis Intellectual Property reviewed relevant treaties, including the Union for the Protection of New Varieties of Plants (UPOV), The Agreement on Trade-Related Aspects of Intellectual Property Rights, & the Lisbon Treaty for the Protection of Appellations of Origin. In this wide-ranging discussion, Luke Zimmerman (Law Office of Luke S. Zimmerman), Dr. Giovanna Toti (Arsenalia), Bryan Khan (University of the West Indies), Enrico Bonadio (University of London), and Joeseph Bondy (Law Offices of Joseph A. Bondy) shared their knowledge about the applicability of the relevant treaties to cannabis. (Registrability under the Madrid Agreement/Protocol and Paris Convention was addressed in the trademark session.)
Marcello Pomeranz (Cooley), Laura Schniedwind (Pax Labs), Pearl Chan (Hill Incorporated), and Soody Tronson (STLG Law) expounded on all things licensing (that could fit into 1.25 hours). Expand Your Toolbox: Creative Approaches to IP Licensing, Protection, and Exclusivity covered a gamut of challenges to drafting an enforceable contract that allows an IP owner to exploit their IP through enforceable contract-based protections. Challenges include local regulations defining owners/financial interest holders, white label manufacturing agreements, avoiding inadvertent franchising, indemnification and more. (During the latter portion of this session, a fire alarm went off and attendees had to evacuate the building, but Jason Moscovici, from host firm ROBIC, hosted the balance of the presentation in one of the firm’s conference rooms, where our indefatigable speakers completed their presentation of the subject matter, which was followed by an extravagant happy hour hosted by ROBIC).
On the subject of trademarks, Natalie Rizkalla-Kamel (Gowling WLG), Katie Paterno (Canopy Growth Corp.), Thomas Verborgh (GEVERS), Arturo Revilla (Chavez, Ruiz, Zamarripa Y Cia), and Mary Shapiro (Evoke Law) addressed the question: Global Protection of Cannabis Brands - Is it Possible? The discussion presented perspectives from attorneys representing Canada, Europe, United States, and Latin America on strategies and challenges facing cannabis companies in protecting cannabis brands. The discussion recognized the varying status of legalization, regulatory laws and requirements in different jurisdictions. And, it addressed consumer confusion between trademarks for cannabis and non-cannabis products and services.
Cannabis Patents and Plant Variety Rights – Things to Know and Challenges Unique to the Cannabis Industry discussed industry-unique challenges for cannabis patents, beginning with an overview of patentable subject matter in the cannabis industry and the availability of patent protection for cannabis-related inventions. Speakers Sheila Gibson (Aura IP), Anthony Parker (Plant Breeder’s rights, Canadian Food Inspection Agency), Poonam Tauh (MBM Intellectual Property Law) and Gretchen Temeles (Feldman Legal Advisors) provided an overview of available plant protection, including plant patents and plant variety protection.
Hannah Stitt (Tectonic Law), Rachael Dickson (Catalytic Law), Arturo Revilla (Chevez, Ruiz, Zamarripa y Cia) and Jeffrey Merk (Aird & Berlis) presented on Ethics: Balancing Activism and Zealous Advocacy with the Boundaries of the Profession and Evolving Law. The speakers addressed the unlicensed practice of law focusing on cross-border expansion, taking contradictory legal positions in different matters for different clients, the duty of candor to administrative bodies, and making arguments that are in the best interest of the client, but against the interest of the industry.
Finally, in IP Litigation and Administrative Proceedings: A Global Overview of Managing Cannabis Conflicts, Jason Moscovici (ROBIC), Dr. Jayashree Mitra (Carlton Fields), Timothy L. Alger (Alger Law APC) and Margaret Knitter (SKW Schwarz) presented on dispute resolution in a global context. There are many factors to consider, such as the remedies and awards that can be granted and the availability of administrative proceedings, such as oppositions, cancellations, impeachments, and protests. In addition to sharing nightmare litigation stories, the speakers presented strategies and lessons learned firsthand.
(These six sessions are accredited for CLE in most United States jurisdictions and CPD credit in select Canadian jurisdictions and are available on the INCBArchives®, INCBA’s library of cannabis-focused educational programs, presented by experienced cannabis industry attorneys, advocates, operators, and educators.)
In addition to world-class educational content, the Symposium included multiple networking opportunities that allowed speakers and attendees to meet and share their experiences in this highly regulated industry. We are grateful to McGill University, all of our sponsors, speakers, and organizers, and the INCBA staff and volunteers who made this event a success.
