High Sierra Technologies, Inc. (High Sierra) develops patents and other products used in the processing of cannabis, including industrial hemp.
The Intellectual Property
High Sierra originally owned two Provisional Patent Applications. The first Application, which was converted into a Utility Patent Application which subsequently became an issued United States Patent (United States Patent Number 10,737,198), describes a new and novel cannabis product that is produced by removing or significant...
High Sierra Technologies, Inc. (High Sierra) develops patents and other products used in the processing of cannabis, including industrial hemp.
The Intellectual Property
High Sierra originally owned two Provisional Patent Applications. The first Application, which was converted into a Utility Patent Application which subsequently became an issued United States Patent (United States Patent Number 10,737,198), describes a new and novel cannabis product that is produced by removing or significantly reducing the naturally occurring complement of volatile organic molecules from cannabis, which primarily consist of terpenes, and is collectively known as the essential oils. This new and novel cannabis product embodies any product produced from any of the flowering plants of the genus Cannabis, using any convenient method for removing or significantly reducing the naturally occurring complement of essential oils, and, which at the same time, generally preserves the naturally occurring complement of cannabinoids in a product that retains the naturally occurring physical structure of cannabis plant material that is normally consumed by way of smoking (combustion and subsequent inhalation) and also leaves the modified harvested cannabis plant material undamaged and still in a condition that it can be smoked in the same manner as before it was modified by the process and/or processes.
The second Application, which was converted into a Utility Patent Application which subsequently became an issued United States Patent (United States Patent Number 10,835,839), describes a new and novel cannabis product that is produced by further modifying a cannabis product based on the first Application containing cannabis plant material that has been previously modified by removing or significantly reducing the naturally occurring complement of volatile organic molecules, which primarily consist of terpenes, and are collectively known as the essential oils, so as to create a low, or no, odor and reduced flavor form of cannabis product.
The Applications and the Utility Patent Application are based on the premise that cannabis (also known as marijuana) which is a preparation of the cannabis plant that encompasses at least three genera of flowering plant in the family of Cannabaceae, including Cannabis sativa, Cannabis indica and Cannabis ruderalis has a distinct odor and flavor, primarily as a result of several volatile small molecules known as terpenes.
High Sierra has engaged the law firm of Oliff PLC to prosecute its Provisional Patent Applications and its Utility Patent Applications. In January 2019, the two provisional patent Applications were combined into one broad and all-encompassing Utility Patent Application which was filed with the United States Patent and Trademark Office, the Canadian Intellectual Property Office and under the provisions of the Patent Cooperation Treaty (PCT), which will afford High Sierra additional temporary protection in an additional 152 other countries.
High Sierra’s Intellectual Property Applications are specific to the dried cannabis plant material where the characteristic odor and flavor have been removed or significantly reduced, as well as products that utilizes the first product. High Sierra is attempting to develop such products, independently, and through joint venture arrangements.
The company’s Patented and Patent Pending products and the processes by which they are generated are specific to modified forms of cannabis which have little or none of the characteristic odors common to cannabis, as well as any modified or flavored products produced with the previously modified cannabis products.
On March 25, 2020, the company received an International Preliminary Report of Patentability for its Patent Cooperation Treaty Application Number PCT/US2019/014778, CANNABIS PRODUCTS MODIFIED BY REMOVING VOLATILE ORGANIC COMPOUNDS AND ADDING VOLATILE UNSATURATED HYDROCARBONS, in which Claims Numbered 1-84 were characterized as novel and Claims Numbered 1-17, 63-70, 83 and 84 were characterized as inventive steps.
In 2020, the United States Patent and Trademark Office, by way of an Office Action dated May 29, 2020, notified the company that Claims Numbered 1-17, 63-70 and 83-84 of Patent Application Number 16/255,157, CANNABIS PRODUCTS MODIFIED BY REMOVING VOLATILE ORGANIC COMPOUNDS AND ADDING VOLATILE UNSATURATED HYDROCARBONS, were allowed. These are four of the seven main claims in Patent Application Number 16/255,157. In response to this, the company’s outside Patent Counsel, Oliff PLC, has filed an Amendment to Patent Application Number 16/255,157 so that these Claims can be issued a formal Notice of Allowance which would then lead to the issuance of a Utility Patent for these Claims. As a result of this action by the company’s attorneys at Oliff PLC, on June 19, 2020, the United States Patent and Trademark Office issued a formal Notice of Allowance and Fee(s) Due which will allow the Utility Patent to be issued once the fees are paid. This Patent was issued as United States Patent Number 10,737,198 on August 11, 2020. The company’s attorneys at Oliff PLC also prepared a Continuation Application for Claims Numbered 18-62 and 71-82 so that the company can continue to prosecute these Claims separately. This Continuation Application has resulted in the issuance of United States Patent Number 10,835,829 on November 17, 2020.
In 2020, the United States Patent and Trademark Office issued United States Patent Number 10,737,198 to the company as assignee of Application Number 16/255.157, CANNABIS PRODUCTS MODIFIED BY REMOVING VOLATILE ORGANIC COMPOUNDS AND ADDING VOLATILE UNSATURATED HYDROCARBONS, filed by Vincent Lombardi.
In 2020, the United States Patent and Trademark Office issued United States Patent Number 10,835,839 to the company as assignee of Application Number 16/255.157, CANNABIS PRODUCTS MODIFIED BY REMOVING VOLATILE ORGANIC COMPOUNDS AND ADDING VOLATILE UNSATURATED HYDROCARBONS, filed by Vincent Lombardi.
In 2022, the United States Patent and Trademark Office issued United States Patent Number 11,338,222 to the company as assignee of Application Number 16/255.157, CANNABIS PRODUCTS MODIFIED BY REMOVING VOLATILE ORGANIC COMPOUNDS AND ADDING VOLATILE UNSATURATED HYDROCARBONS, filed by Vincent Lombardi.
Now United States Patents Numbers 10,737,198, 10,835,839 and 11,338,222 have been formally issued, the company intends to begin actively marketing and licensing its patented technologies in both the cannabis and hemp market spaces, as well as pursuing its own uses of its patented technologies in relation to various end user products that can benefit from its patented technologies.
The company has received a First Office Action on its Canadian Patent Application Number 3,031,123, CANNABIS PRODUCTS MODIFIED BY REMOVING VOLATILE ORGANIC COMPOUNDS AND ADDING VOLATILE UNSATURATED HYDROCARBONS, and its attorneys at Oliff PLC and Bereskin & Parr in Canada have responded to it. The company has also amended its Canadian Patent Application so that it reflects the claims embodied in United States Patents Numbered 10,737,198, 10,835,839 and 11,338,222, as well as the Continuation in Part Application Number 17/726,860 filed on April 22, 2022. The company has received a Second Office Action to this Amended Canadian Patent Application and, in concert with its attorneys, has recently responded to it.
The company’s outside Patent Counsel, Oliff PLC has completed the Application to the European Patent Office (EPO) based on Patent Cooperation Treaty Application Number PCT/US2019/014778, CANNABIS PRODUCTS MODIFIED BY REMOVING VOLATILE ORGANIC COMPOUNDS AND ADDING VOLATILE UNSATURATED HYDROCARBONS. It has been filed as European Patent Office Application Number 19743904.5. The company has also recently amended its EPO Application so that it accurately reflects the claims embodied in United States Patents Numbered 10,737,198, 10,835,839 and 11,338,222 as well as the Continuation in Part Application Number 17/726,860 filed on April 22, 2022. This EPO Application, as amended, will allow the company to simultaneously prosecute its PCT Application in a total of 44 different countries in Europe and the surrounding areas as well as Hong Kong. The company has received a First Office Action to its European Patent Office Application Number 19743904.5. The company and its attorneys at Oliff PLC and Astrum Element One Limited in the United Kingdom have responded to it.
In 2022, the United States Patent and Trademark Office issued a Notice of Allowance for the company’s Continuation Application No. 17/098,539, which was filed on November 16, 2020.
The company has prepared and filed a Continuation in Part Application for Continuation Application No. 17/098,539 which should result in the company receiving a fourth United States Patent in due time.
Marketing Plans to License the Intellectual Property
High Sierra is marketing the licensing of its technology in states in the U.S. where cannabis and/or hemp has been legalized both for medicinal and/or recreational use. It also plans to use a similar marketing strategy in all provinces in Canada which have legalized both the medicinal and recreational uses of cannabis as of October 17, 2018. High Sierra is targeting entities that are licensed to produce, process and/or manufacture cannabis and/or hemp related products. High Sierra considers every manufacturer of cannabis and/or hemp products a potential customer. High Sierra has begun to identify each manufacturer for a direct marketing campaign.
Hemp Cigarette Business
High Sierra has identified a growing market place for hemp cigarettes especially those that can benefit from High Sierra’s patented and patent pending technologies. It is the intention of High Sierra to enter into this market place as soon as possible after it receives sufficient funding from its Private Placement Offerings. To that effect, the company is negotiating with one of the largest hemp cigarette manufacturers in the country to enter into a joint venture to produce and market a new brand of low odor hemp cigarettes. The negotiations resulted in the execution of a non-binding Letter of Intent dated February 18, 2022, by the parties to enter into a Joint Venture to manufacture, market and distribute hemp cigarettes and hemp-based products in the United States, Canada and Mexico using its Patented and Patent Pending Technologies.
In 2022, the company’s wholly-owned subsidiary, High Sierra executed a Joint Venture Agreement (the Joint Venture Agreement) with Hempacco Co., Inc. (Hempacco) for the production, marketing, and sales of hemp smokables that will use its patented and patent-pending technologies, as well as certain patented and patent-pending technologies held by Hempacco. Pursuant to this Joint Venture Agreement, High Sierra and Hempacco formed a new Nevada corporation known as Organipure, Inc (Organipure). High SIerra and Hempacco each own one-half of the equity interests in Organipure.
In connection with the execution of the Joint Venture Agreement, Hempacco also entered a Hemp Smokables Manufacturing Agreement with Organipure (the Manufacturing Agreement), pursuant to which Hempacco will act as Organipure’s exclusive worldwide manufacturer and supplier of hemp smokables, subject to the terms and conditions of the Manufacturing Agreement. The hemp smokables will be manufactured according to product specifications and packaging described in the Manufacturing Agreement.
Also, in connection with the execution of the Joint Venture Agreement, High Sierra entered into a Patent License Agreement with Organipure (the HSTI Patent License Agreement), which granted Organipure a non-exclusive license of High Sierra’s patented and patent-pending technologies to be used in connection with the hemp smokable products to be produced, marketed, and sold by Organipure. The annual license fee will be 5% of Organipure’s gross receipts from the use of the High Sierra patents by Organipure. The term of the license expires December 31, 2033, unless terminated earlier for reasons specified in the HSTI Patent License Agreement.
Similarly, Hempacco entered into a Patent License Agreement with Organipure (the Hempacco Patent License Agreement), which granted to Organipure a non-exclusive license of Hempacco’s patented and patent pending technologies to be used in connection with the hemp smokable products. The annual license fee will be 5% of Organipure’s gross receipts from the use of the Hempacco patents by Organipure. The term of the license expires December 31, 2033, unless terminated earlier for reasons specified in the Hempacco Patent License Agreement.
Hempacco is an industry leader in the hemp smokables market space. Hempacco’s state-of-the-art production facility provides it with superior production capabilities that allow it to be able to produce over 30 million hemp cigarettes per month with the ability to quickly expand its production capabilities with very short notice.
This is the first use of the patent technology developed by the company’s wholly owned subsidiary.
The company is looking for other opportunities in the hemp/CBD market and has signed certain Letters of Intent and verbal agreements that it is seeking to concurrently fund and close.
Governmental Regulations
The company is subject to various regulations of the SEC and applicable securities laws, rules and regulations. The company is also subject to the Sarbanes/Oxley Act of 2002. Section 14(a) of the Exchange Act requires all companies with securities registered pursuant to Section 12(g) of the Exchange Act to comply with the rules and regulations of the SEC regarding proxy solicitations, as outlined in Regulation 14A. Matters submitted to stockholders at special or annual meetings thereof or pursuant to a written consent will require it to provide its stockholders with the information outlined in Schedules 14A or 14C of Regulation 14; preliminary copies of this information must be submitted to the SEC at least 10 days prior to the date that definitive copies of this information are forwarded to its stockholders. The company will remain an emerging growth company as defined in the Jumpstart Our Business Startups Act of 2012(the JOBS Act).
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