Out of the Shadows: Biotech Institute, LLC

Just who is Biotech Institute, LLC?

Since the publication of Biotech Institute’s cannabis utility patent application (U.S. Pub. No. 20140287068) in 2014, everyone has been left wondering who Biotech Institute is.

Operating from the shadows with no public information, Biotech Institute began its pursuit of cannabis IP as early as March of 2014. Biotech Institute was granted the first cannabis related utility patent (U.S. Pat. No. 9,095,554) in 2015, which caused quite a buzz in the cannabis industry. Cannabis advocates warned of the potential strongarm Biotech Institute could have as a result of them receiving allowance on patent ‘554 — afraid that most hybrid cannabis plants could fall under the protection of the patent.

Patent ‘554 entitled “Breeding, production, processing and use of specialty cannabis” teaches methods for breeding “specialty cannabis” as well as methods of producing compositions containing cannabis products. Specialty cannabis is defined in the patent as “…cannabis plants, lines, varieties and cultivars having a THC content based on the dry weight of plant inflorescences less than or equal to 90% (i.e., THC ≤ 90%) and having a CBs content based on the dry weight of plant inflorescences equal to or greater than 1.0% (e.g., CBD, CBDV, THCV, or CBG of ≥ 1.0%); or, alternatively, having a THC:CBs ratio of 1:20 or greater and approaching 1:1 or greater based on the dry weight of plant inflorescences.” Although this seems like a broad definition that nearly captures most of today’s cannabis plants, the claims are narrower in that they specify the terpene makeup of the cannabis plant. Specifically, the hybrid specialty cannabis plant has a terpene profile with myrcene not being the dominant terpene, as well as having a CBD content greater than 3%. So, it is unlikely that its patent can cover all cannabis plants.

Biotech Institute emerged somewhat from stealth sometime in October of 2018, launching a website and social media accounts. On LinkedIn, they describe themselves as an “innovation company focused on developing novel plant-based therapeutics and related technologies.” There are two employees listed on Biotech Institute’s LinkedIn – President of Biotech Institute Gary Hiller and a private account for a researcher at the Biotech Institute of Vietnam, suggesting they may have a global presence. Biotech Institute’s website lists its address in Southern California. So far, Biotech Institute’s public face matches what they were doing behind the scenes.

Since its first patent filing, Biotech Institute filed 16 patent applications, both plant and utility types, 6 of which are continuations of patent ‘554. Of the 6 continuations, three patents have been granted (U.S. Pat. Nos. 9,370,164, 9,642,317, & 10,582,676), two applications are still pending (U.S. Pub. No. 20180064055 & U.S. Pat. App. No. 16/813,405), and one application has been abandoned (U.S. Pub. No. 20170202170). The claims in the granted child patents go on to further specify cannabis cultivars and chemotypes (Type II) with myrcene not being a dominant terpene as a common feature among all of them. Publication ‘055 seeks to claim cannabis extracts with a CBD content greater than 5%, a THC content of at least 5%, and a terpene profile that is not dominant in myrcene. Magic Number’s Patent Matrix® Diagram makes spotting key differences in the independent claims an easy task. Our Magic Number® Cannabis Patent Forecast® data shows Biotech Institute as the top patent owner in the “Cultivation” category.

Since late 2018, Biotech Institute has had 10 patents granted, 7 of which are plant patents (i.e. cannabis cultivars) with names like “GUAVA JAM” and “CAKE BATTER COOKIES”. These names have not been trademarked; however, Biotech Institute does have two pending trademarks for “Enhanced” and “E Enhanced +,” smoking products containing a proprietary blend of cannabinoids and no more than 0.3% THC. Biotech Institute’s portfolio has grown to 13 granted patents and 6 pending applications, as seen in the Cannabis Patent Forecast below, and it focuses on cannabis breeding and genetics. A press release from February 18, 2020 laid out the details for a licensing agreement between Biotech Institute and Booshoot, LLC to use Booshoot’s developed and patent pending (WO2013016198; AU 2016244230) technology for plant micropropagation methods. President Hiller said “[Biotech’s use of Booshoot’s] micropropagation technology lowers plant costs, exponentially increases the ability to propagate unprecedented numbers of plants, and eliminates disease and pests pressure, while spawning plants with performance and yields that in many instances are superior to seedlings.” It is Biotech Institute’s goal to set a new standard in cannabis and hemp propagation using the technology Booshoot has developed. Based on its consistent investment in patents over time and its pending trademarks, it seems that there may be more to be revealed for Biotech Institute in the future. Stay tuned.

Magic Number® Cannabis Patent Forecast® Patent Radian® diagram highlighting a few of Biotech Institute’s granted utility and plant patents. Hollow circles represent applications while solid circles represent granted patents. The size of the circle corresponds to the size of the specification.

Even though Biotech Institute may have a solid foothold in the cannabis sector with its patent activity, there is still the issue of whether or not Biotech Institute could actually get any return on its patents since cannabis is illegal on the federal level.

Currently, The United States District Court for the District of Colorado is moving forward with a patent infringement case between United Cannabis Corporation and Pure Hemp Collective. Earlier this year, Judge William J. Martinez issued a Claim Construction Order and the case is proceeding. However, even if infringement is found, it is unclear what damages could be recovered.

Biotech Institute will most likely be following this case closely and we could see litigation activity from Biotech Institute if the Federal Court determines that damages are recoverable in a cannabis related patent infringement lawsuit.

As for tangible goods, Biotech Institute does not appear to have any public products or dispensaries in the U.S. It is possible that Biotech Institute will focus its efforts on licensing its IP as well as litigation.

One thing is for certain, Biotech Institute has developed a portfolio of cannabis patents that they will surely look to monetize somehow. Magic Number will continue to follow Biotech Institute’s IP investments and market activity to see how they maintain their lead within the cannabis industry.

Without Magic Number, companies like Biotech Institute would go unnoticed as a result of their lack of commercial activity. Subscribe to the Patent Forecast® Cannabis sector for the latest in cannabis IP investment trends.