Psychedelic Patents

MagicMed – Patent Wizard or Late to the Game?

In September of 2020, we published an article about MagicMed, wondering whether they were going to become psychedelic industry’s first patent troll. At that time, MagicMed had issued a few press releases and its CEO, Joseph Tucker had made some statements indicating that the company’s strategy was to patent and out-license compounds without any intention of conducting clinical trials or developing drugs. Fast-forward to January 2021 and it looks like our suspicions were exactly right: In an interview with Steve Darling from Proactive, Mr. Tucker explained that MagicMed’s strategy is to “capture as much intellectual property as possible and the most valuable intellectual property. ” See video below for interview.

Consistent with this patent-focused strategy, Dr. Joseph Tucker, CEO of MagicMed recently announced that MagicMed’s patent portfolio includes 12 patent applications for 9 different chemical compound categories with the potential to protect over 125 million individual molecules.

Mr. Tucker distinguished MagicMed’s “unique” strategy from other companies in the space but emphasizing that MagicMed intends to extract profits through licensing its intellectual property rather than conducting research and developing drugs. “With novel compounds, manufacturing methods, pharmacological properties, and patent filings in place, the company’s partners can focus on what they do best—running clinical trials and securing approvals. This unique business model makes MagicMed a facilitator to the entire psychedelics industry and could allow MagicMed to maximize its market potential.”

“Magic” or Smoke and Mirrors?

Some commentators have already taken issue with MagicMed’s strategy, which boils down to extracting royalties from other entities (“partners”) focused on developing psychedelic drugs. For these people there is good news: While MagicMed claims to be “well-positioned to capitalize on its diverse derivative library,” they also appear to be rather naive when it comes to patent law. As a result MagicMed will likely face an uphill battle getting any of its patent claims to issue. And, there’s a chance that their compounds are owned by someone else, who filed patents earlier. Here are three key points:

  1. MagicMed did not begin to file it’s patent applications until mid-2020. On July 9, 2020 MagicMed Industries Inc. (“MagicMed”) announced that it filed it’s first provisional patent application with the United States Patent and Trademark Office (USPTO), allegedly covering compositions of matter, drug formulation and process of preparation claims for novel psilocybin derivatives.  At that time, MagicMed characterized this patent filing as “the first in a series of applications that together will protect the Company’s broad portfolio of novel psilocybin molecular derivatives, the PsybraryTM.”
  2. On August 24th, 2020, MagicMed issued a press release confirming the company’s intention to file patent applications.  According to the press release, “MagicMed Industries intends to file numerous patents to stake broad claims over the new derivative molecules contained in the Psybrary™, from which the company’s partners can gain a significant competitive edge in new product development using molecules that are fully patent protected.”
  3. It wasn’t until December of 2020 that MagicMed completed filing the “12 patent applications for 9 different chemical compound categories with the potential to protect over 125 million individual molecules.” That was last month. And the rest of the psychedelics industry had already caught onto the idea of creating and filing intellectual property.

MagicMed was Late to the Game.

MagicMed’s priority dates could not possibly go back early than mid-2020 when it filed its first provisional patent application on psilocybin derivatives. And, MagicMed’s other patent applications weren’t filed until at least Q4 of 2020. (Before that, Mr. Tucker was boasting about his “intention” to file applications.) Given that patent applications do not publish until 18 months after their earliest priority date, MagicMed has no idea about other entities filing patent applications between about June of 2019 and the present day. Any disclosures during that period of time would create prior art that would anticipate MagicMed’s patent application.

Similarly, Mr. Tucker has no idea whether other entities filed competing patent applications between June of 2019 and MagicMed’s first patent filing. Notably, the psychedelic industry had fully embraced patents by that time; so it wouldn’t be surprising if lots of patent applications were filed between June of 2019 and July of 2020. Taken all together, the story of MagicMed could have an ironic outcome: MagicMed’s compounds could infringe other companies’ patents! If that happens, it will be curious to see if Mr. Tucker views those patent infringement lawsuits as “facilitating” MagicMed’s business.