2022 Year In Review: Electrical & Computer Technology – Patent

The year 2022 brought significant changes to the Canadian patent
law, including updates to the Patent Rules and
developments relating to subject matter eligibility. Globally, the
question of artificial intelligence (AI) and inventorship remained
a contentious topic. As digital technology continued to evolve in
2022, the interest in areas such as the metaverse and related
fields saw an upward trend, as evidenced by increase in the number
of patent filings.

In this article, we review some key highlights on the topics of:
1) patents and the metaverse; 2) AI and inventorship; 3) subject
matter eligibility for computer-implemented inventions; and 4)
amendments to the Canadian Patent Rules.

1. Patents and the Metaverse

The metaverse continued to be an important topic of discussion
and curiosity in 2022. This trend has also been reflected in the
patent world, with metaverse-related patent filings being on the
rise.¹ A recent report by a consulting firm
specializing in the detection and analysis of emerging innovation
shows that patent filings for metaverse-related technologies have
doubled since 2018, with Microsoft and Samsung leading the
pack.²

Many other high-profile companies, such as Magic Leap, IBM,
Unity, Roblox, Meta and Apple are also filing patent applications
for metaverse-related technologies, with most companies pursuing
patent protection for hardware and software augmented reality (AR),
mixed reality (MR) and virtual (VR) applications, and more
specifically in the areas of pattern recognition, 3D model
manipulation, head-mounted optical devices, and interactions with
the human body.

In the past few years, for example, Microsoft has filed a number
of patent applications directed to VR and MR technologies, and in
2022, Microsoft launched ‘Mesh for Microsoft Teams’, a
solution that combines the mixed reality capabilities of Microsoft
Mesh with the features available in Microsoft Teams and aims to
“make collaboration in the ‘metaverse’ more
fun”.³

Roblox Corporation, the company behind the successful online
game platform has also begun filing patent applications directed to
manipulating 2D and 3D assets⁴ while Meta has
expanded into wearables for interacting with virtual
objects⁵.

As the concept of the metaverse continues to develop, and
adoption becomes more widespread, metaverse-related patent filings
will surely continue to increase. 

2. AI as an Inventor

In 2022, the question of whether an AI can be an inventor,
raised by the DABUS (Device Autonomously Bootstrapping Uniform
Sensibility) patent applications, continued to make its way through
the various courts and intellectual property
offices. ⁶  As a refresher, DABUS is an AI
system developed by Dr. Stephen Thaler, that can allegedly
autonomously create inventions.

In the United States, the Court of Appeals of the Federal
Circuit (CAFC) held that on a plain reading, the US Patent
Act  unambiguously requires an inventor to be a natural
person and consequently, an AI system could not be named as
inventor on a United States patent application, upholding the
USPTO’s 2020 decision to reject the DABUS applications and
affirming the US District Court for Eastern District of
Virginia’s 2021 decision. Dr. Thaler filed a combined petition
for panel rehearing and rehearing en banc at the CAFC, which the
CAFC denied. Dr. Thaler is set to file a petition for a writ of
certiorari before the Supreme Court of the United States before
March 19, 2023. 

In Australia, the Full Court of the Federal Court of Australia
held that a patent application that lists an AI system as an
inventor does not comply with the Patent Regulations, reversing the
Federal Court’s 2021 decision which held that the Patents Act
did not preclude an inventor from being a non-human AI system. Dr.
Thaler applied for special leave to appeal this decision to the
Australian High Court, but the appeal was dismissed, ending Dr.
Thaler’s campaign in the country.⁷

In the United Kingdom, Dr. Thaler applied for permission to
appeal the Court of Appeal’s 2021 split decision which held
that an inventor must be a person. Permission was granted in August
of 2022 and the hearing is scheduled for March 2023.

In Germany, the Federal Court’s 2021 decision to refuse the
patent applications on the basis that only natural persons can be
designated as inventors has been appealed to the Supreme
Court. 

While in Europe, in 2021, the Legal Board of Appeal (the
“Board”) of the European Patent Office (EPO) refused a
European patent application listing DABUS as the sole inventor, in
its written reasons issued in 2022, the Board suggested that the
owner of an AI could be designated as an inventor of an
AI-generated invention.⁸

In Canada, the Canadian Intellectual Property Office (CIPO)
issued a non-compliance notice in late 2021, asserting that because
the inventor is a machine and it does not appear possible for a
machine to have rights under the Canadian law or to transfer those
rights to a human, the DABUS applications do not comply with
the Patent Act 
and Rules. CIPO, however, did invite Dr. Thaler
to submit a statement on behalf of the AI machine and identify, in
that statement, himself as the legal representative of the
machine.

In response, Dr. Thaler’s representatives argued that
according to the doctrine of ownership by accession, since Dr.
Thaler owns DABUS, it follows that he must also be the owner of
invention(s) produced by DABUS and therefore, he should be entitled
to seek patent protection for inventions produced by DABUS. Dr.
Thaler’s representatives also argued that in any case,
precluding inventions developed by artificial intelligence from
patent protection would stifle innovation. CIPO has not yet
commented on this position, but the applications have been
deemed Patent Cooperation Treaty (PCT)
non-compliant for the time being.⁹

The question of AI and inventorship is likely to continue to be
a topic of discussion in 2023, especially with the rise of
generative AI. Dr. Thaler and DABUS, however, will likely continue
to face significant challenges in convincing courts and the various
intellectual property offices that DABUS can be named an
inventor.

3. Developments in Subject Matter Eligibility for
Computer-Implemented Inventions

While the first half of 2022 saw few developments in the law of
subject matter eligibility, the second half of the year was marked
by the Benjamin Moore¹⁰  decision of
the Federal Court, which brought much attention and focus to the
topic.

At play in this decision were two of Benjamin Moore’s patent
applications, related to computer-implemented colour selection
methods, both of which had been refused by the Commissioner.

Consistent with the
2020 Choueifaty¹¹  decision, the
Federal Court agreed that CIPO’s continued use of the
problem-solution approach was incorrect. However, rather than
remitting the applications back to CIPO for reconsideration in
light of Choueifaty  – the applications had been
examined prior to that decision – the Court instead instructed CIPO
to follow the framework proposed by the Intellectual Property
Institute of Canada (IPIC), an intervener in the appeal.

Under IPIC’s 3-part framework, patent examiners are required
to:

1.  Purposively construe the claim;




2. Ask whether the construed claim as a whole consists of only a
   mere scientific principle or abstract theorem, or whether it
   comprises a practical application that employs a scientific
   principle or abstract theorem; and




3. If the construed claim comprises a practical application,
   assess the construed claim for the remaining patentability
   criteria: statutory categories and judicial exclusions, as well as
   novelty, obviousness, and utility.

The Benjamin Moore  case was not without
controversy, as the court notably ordered a government agency to
follow a framework proposed by a professional association. The
decision also raised questions about the separation of powers and
the intent of Parliament, the Court’s interpretation of
the Patent Act, and the unequivocal nature of the
IPIC framework.

The Attorney General of Canada filed a notice to appeal the
Federal Court’s decision and the appeal is set to be heard in
February 2023. The Federal Court of Appeal decision is eagerly
awaited by both the Canadian patent practitioners and the
applicants.

4. Amendments to the Canadian Patent Rules

Amongst the most noteworthy news in Canadian patent law in 2022
was the coming into force in October of amendments to the
Canadian Patent Rules, which introduced important
changes to patent prosecution in Canada.¹²

A significant change introduced by the amendments to
the Patent Rules  is the introduction of excess
claim fees for claims in excess of 20. If the number of claims
exceeds 20 at any time between the request for examination and the
payment of the final fee, excess claim fees will apply. Multiple
dependent claims, however, continue to be counted as single claims
for the purpose of calculating claim fees.

A second important change to the Patent 
Rules is the introduction of a new continued examination procedure
intended to limit the number of office actions. Under the new
rules, a request for continued examination along with the
prescribed fee are required after three office actions and
subsequently, after every two office actions to continue
prosecution of the application.

Other amendments include the introduction of a set of changes to
the notice of allowance procedure. A conditional notice of
allowance can now be sent to applicants when only minor defects
remain in the application. However, while previously, an applicant
could request withdrawal of a notice of allowance to reopen
prosecution and file additional amendments, the new Patent
Rules now require that a request for continued
examination be filed, accompanied by payment of the prescribed
fee.

Though the changes have started to impact prosecution strategies
in Canada in the months leading up to and since the coming into
force of the amendments, their full effects will certainly be felt
in 2023.

Footnotes

1. https://www.bereskinparr.com/doc/ip-metaverse-series-part-2-patent-considerations

2. https://www.ificlaims.com/news/view/briefing-metaverse.htm

3. https://news.microsoft.com/source/features/innovation/mesh-for-microsoft-teams/

4. https://patents.google.com/patent/US20220068007A1

5. https://patents.google.com/patent/US11068057B1

6. https://www.bereskinparr.com/doc/united-states-court-of-appeals-for-the-federal-circuit-holds-that-an-artificial-intelligence-system

7. https://www.hcourt.gov.au/assets/registry/special-leave-results/2022/11-11-22_SLA_Canberra.pdf

8. https://www.epo.org/law-practice/case-law-appeals/communications/2022/20220706.html

o/cpd/eng/patent/3137161/summary.html”>https://www.ic.gc.ca/opic-cipo/cpd/eng/patent/3137161/summary.html

10. Benjamin Moore & Co. v. Attorney General
Of Canada, 2022 FC 923 [Benjamin Moore].

11. Choueifaty v Attorney General of Canada,
2020 FC 837 [Choueifaty]

12. https://www.bereskinparr.com/doc/amendments-to-the-canadian-patent-rules-are-coming-into-force-on-october-3-2022

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