Is there Magic in those Mushrooms? Protecting Psilocybin and Other Actives from Magic Mushrooms
January 29, 2021
By Michael Fenwick
A few years ago, with the legalization of cannabis in Canada and other countries, chemists rushed to isolate active compounds from the plant, synthesize new cannabinoid derivatives and formulate new preparations for the delivery of these active compounds. As a result, patent and trademark offices were flooded with new applications protecting such inventions and products. Today, while research into cannabis remains strong, there is now a focus on the active compounds found in ‘magic mushrooms’, particularly the compound psilocybin. While psilocybin remains illegal in Canada (and other jurisdictions), the potential benefits of psilocybin and its derivatives for the treatment of mental health disorders is spurring a significant amount of research in the hopes that one day these compounds will be legalized. In fact, last year Health Canada authorized a publicly traded Canadian company to legally extract psilocybin from mushrooms to standardize the company’s extraction process. Health authorities in various countries, such as the US and Canada, have allowed clinical trials to move forward involving psilocybin therapy for treatment-resistant depression.
This article will provide a general overview of the types of intellectual property available to protect innovation in the mushroom space. A follow-up article will provide an in-depth review of strategies for patenting new psilocybin derivatives and potential formulations for delivery.
Patents can often provide the strongest intellectual property protection for those looking to protect innovations in the mushroom space. An issued patent allows the owner to exclude all other parties from making, using, or selling the invention for a period of 20 years (from the filing date of the patent application). Patent rights can be enforced once a patent application has successfully completed the examination process in which a patent examiner reviews the application and determines whether the invention is patentable. An invention can be protected by a patent if the subject matter is new, non-obvious and useful. Examples of potential inventions in the mushroom space include new chemical derivatives of psilocybin, potential new treatments of health conditions which can be treated by psilocybin and its derivatives, and new formulations which can deliver the active compounds. In addition, new and inventive methods of extraction of the active compounds from mushrooms, as well as processes for synthesizing such compounds would likely be patentable as well.
Patent rights are territorial and therefore an inventor must file the same patent application in each country where protection is sought; for example, an inventor looking to protect an invention in the United States and Canada, must file a patent application at the United States Patent and Trademark Office (USPTO) and the Canadian Intellectual Property Office (CIPO). A patent granted in one jurisdiction does not guarantee success that the patent will be granted in another jurisdiction. A Canadian patent, for example, only provides patent rights across Canada. Once a patent grants, it can be enforced against infringers who make, use, sell or import the patented invention.
Unlike patents which can protect the making, use and sale of an actual product (for example a new medicine), trademarks protect words, slogans, logos and/or designs which serve to distinguish a company and/or product from other competitors in the market. As magic mushrooms and psilocybin are still considered illicit substances, certain intellectual property offices may not register marks that specify such products. There may be other available strategies in some countries, such as to refer more generically to the goods and services. Trademark registrability may improve if psilocybin and its derivatives are eventually legalized for the treatment of mental health conditions. Generally, to obtain trademark protection, the word or slogan must not be descriptive of the actual product, and must not be confusing with other trademarks. Similar to the patent examination process, a trademark examiner reviews the proposed trademark to ensure it complies with all aspects of trademark law. Unlike a patent which lasts for a maximum of 20 years, protection for a registered trademark (once granted) can last forever if the renewal fees are paid to maintain the mark on the register.
A trade secret is another form of intellectual property which protects certain types of confidential information. Like the name suggests, for a trade secret to offer protection, the information must remain secret and that information must have economic value which provides a competitive advantage. Companies must take reasonable steps to maintain the secrecy of the information. Examples of trade secrets include technical processes, formulas, business plans and customer lists. The information is protected as long as it remains a secret, and if disclosed without authorization or misappropriated, the offending party may be held responsible if there was a theft, an obligation of confidence or fiduciary duty. In the psilocybin industry, a company may have a specialized process for extracting the active compounds which they decide to maintain as a trade secret, rather than trying to protect (and therefore disclose) through the patent process.
Another form of intellectual property involves the protection of plant varieties. In Canada for example, new Cannabis varieties can be protected through Plant Breeders’ Rights legislation. Similar to patent rights, once granted, Plant Breeders’ Rights include the right to sell, produce, and reproduce the propagating material of the plant variety. However, fungi are not covered by Plant Breeders’ Rights’ and therefore, protection as a plant variety does not extend to mushrooms in Canada. Other jurisdictions may allow for the protection of mushrooms through similar rights.
Moving Forward with an IP Strategy
As scientists begin to unravel the potential of magic mushrooms, especially for the treatment of mental health disorders in a post-pandemic world, companies in this space would be well served to have an intellectual property strategy in place as they navigate this potentially lucrative world. While psilocybin and its derivatives are still controlled substances, laws could change quickly so as to permit new, legal treatments. While patents can serve to protect a company’s core products or services, utilizing all aspects of intellectual property rights will ensure the company is well suited to take on the challenges of a brave new world.
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