The Highwayman Returns: Paper Guns, Green Gold, and Patent Enforcement
This article reviews The New Highwayman: Enforcement of U.S. Patents on Cannabis Products by William J. McNichol, Jr. published in the Journal of the Patent and Trademark Office Society.
Picture a thief on horseback in 1725 with a silk mask, pistol gleaming, shouting, “Stand and deliver!” Now replace the horse with a startup company, the pistol with a patent, and the loot with intellectual property (IP) over cannabinoid molecules. William McNichol’s article “The New Highwayman” takes us on a ride through this modern inversion: innovators brandishing federal patents or IP for products that remain, paradoxically, illegal under federal law. The bandits haven’t vanished—they’ve merely incorporated.
Cynical Optimism on the Cannabis Patent Frontier
Civilization is a story of respectable piracy refined by paperwork. McNichol reminds us that patents are badges of innovation, that may become badges of hypocrisy when enforced against the backdrop of federal prohibition. It’s a familiar American ritual: one hand issues patents in the name of progress, while the other enforces the Controlled Substances Act. Between them lies the shadow economy where billion-dollar valuations meet century-old taboos.
The Case Before Us: McNichol’s Argument in Brief
McNichol, a Rutgers law professor and member of both U.S. and Canadian patent bars, explores whether patents covering cannabis products are legally enforceable in U.S. courts.
He asks two deceptively simple questions:
Can the U.S. Patent and Trademark Office (USPTO) grant patents on products that are illegal to make or sell?
Can federal courts enforce such patents without becoming accomplices to illegality?
Through a meticulous legal archaeology—digging from The Highwayman’s Case through modern Federal Circuit decisions—McNichol demonstrates how centuries of law converge on a profound contradiction in the modern cannabis industry.
Exhibit A: The Contradictions of Cannabis Patent Law
McNichol catalogs the tension between innovation incentives and criminal statutes. The USPTO, he notes, has issued more than 3,000 cannabis-related patents over two decades, covering strains, extracts, devices, and formulations.
Yet every one of these patents rests atop a legal fault line: the Controlled Substances Act (CSA) still classifies cannabis as a Schedule I drug—illegal to manufacture, distribute, or possess.
The paper divides its analysis between:
Regulatory Deference: The PTO may issue patents but defers to agencies like the FDA or DEA to decide legality (e.g., Epidiolex and Marinol).
Ex Turpi Causa Doctrine: Courts cannot enforce claims that arise from illegal acts—“from a dishonorable cause, no action arises.”
In short, the PTO may hand you the pistol, but the court may refuse to load it.
In the Author’s Words
“Owners of cannabis patents are the new highwaymen… Plaintiffs in such cases ask the court to protect a monopoly in a criminal enterprise.”
— McNichol, 2019, p. 48And here’s another one to ponder:
“The U.S. patent system is unlikely to play its customary role of incentivizing innovation and encouraging investment.”
— Ibid
This biting metaphor is more than rhetoric—it crystallizes the paradox. McNichol’s scholarship is anchored in judicial humility: the law’s power cannot stretch to bless what Congress continues to condemn.
Beyond the Courtroom
For the cannabis industry, McNichol’s reasoning threatens the foundation of intellectual property strategy. Investors value patents as evidence of defensible innovation, but if those patents are unenforceable under ex turpi causa, they become decorative trophies. They may simply be tokens of progress without legal protection, at best used to garner favor with your investors. Or at least it may impress your friends and family.
From a public health standpoint, this dissonance impedes legitimate R&D. Scientists and manufacturers pursuing FDA pathways face the same structural uncertainty as underground chemists. Both innovate; only one may publish.
Lessons for Legal Teams and Expert Witnesses
McNichol’s analysis should guide litigators and consultants who navigate the gray zones of cannabis regulation. A few takeaways for legal teams:
Patent ≠ Permission: A granted cannabis patent does not confer a lawful right to make or sell.
Federal Courts May Abstain: Enforcement actions risk dismissal under ex turpi causa or “illegality” doctrines.
Expert Witness Insight Is Crucial: Attorneys need scientists who can contextualize patent claims within federal and state compliance frameworks—bridging chemistry, policy, and precedent.
For expert witnesses, McNichol’s “new highwayman” metaphor underscores the need to testify not just to science, but to the law’s uneasy dance with it.
Precedent and Patterns
This article resonates with themes I’ve explored in Cannabis Patents, Prior Art, and the Courtroom Theater of Memory, as well as subjects related to hemp litigation and the courts putting the breaks on certain types of cases from moving forward.
Across each essay, the refrain is the same: our scientific capacity to innovate has outpaced our regulatory courage to reconcile innovation with justice. The result is a patchwork legal order that criminalizes progress while licensing it through bureaucratic ritual.
The Long Road to Legitimacy
The moral of The New Highwayman is not simply legal but cultural: a nation cannot patent what it refuses to legalize. Until Congress reconciles cannabis’s status, every innovation will carry the scent of paradox—half promise, half prohibition.
McNichol’s essay invites us to imagine a more coherent system—one where the same government that blesses innovation does not, in the same breath, criminalize its application.
Until then, the cannabis patent holder rides the old road again: a highwayman, armed with paperwork, galloping between legality and the gallows.
