The calendar year 2022 introduced considerable alterations to the Canadian patent law, which include updates to the Patent Rules and developments relating to topic matter eligibility. Globally, the question of synthetic intelligence (AI) and inventorship remained a contentious subject. As electronic technologies continued to evolve in 2022, the curiosity in spots such as the metaverse and relevant fields noticed an upward development, as evidenced by maximize in the quantity of patent filings.
In this posting, we evaluation some important highlights on the matters of: 1) patents and the metaverse 2) AI and inventorship 3) matter make a difference eligibility for computer system-carried out inventions and 4) amendments to the Canadian Patent Rules.
1. Patents and the Metaverse
The metaverse continued to be an critical subject of discussion and curiosity in 2022. This craze has also been mirrored in the patent environment, with metaverse-linked patent filings remaining on the increase. A current report by a consulting agency specializing in the detection and evaluation of emerging innovation demonstrates that patent filings for metaverse-connected technologies have doubled considering the fact that 2018, with Microsoft and Samsung foremost the pack.
A lot of other superior-profile organizations, this kind of as Magic Leap, IBM, Unity, Roblox, Meta and Apple are also submitting patent purposes for metaverse-associated systems, with most firms pursuing patent protection for components and program augmented truth (AR), combined reality (MR) and digital (VR) apps, and extra precisely in the regions of sample recognition, 3D model manipulation, head-mounted optical units, and interactions with the human physique.
In the past few a long time, for illustration, Microsoft has filed a quantity of patent applications directed to VR and MR systems, and in 2022, Microsoft introduced ‘Mesh for Microsoft Teams’, a answer that brings together the mixed fact abilities of Microsoft Mesh with the characteristics accessible in Microsoft Teams and aims to “make collaboration in the ‘metaverse’ additional fun”.
Roblox Company, the company guiding the thriving on line match system has also begun submitting patent apps directed to manipulating 2D and 3D belongings whilst Meta has expanded into wearables for interacting with digital objects.
As the strategy of the metaverse proceeds to acquire, and adoption gets a lot more popular, metaverse-related patent filings will undoubtedly go on to raise.
2. AI as an Inventor
In 2022, the concern of no matter if an AI can be an inventor, elevated by the DABUS (Device Autonomously Bootstrapping Uniform Sensibility) patent purposes, continued to make its way by way of the numerous courts and intellectual residence places of work.  As a refresher, DABUS is an AI process formulated by Dr. Stephen Thaler, that can allegedly autonomously create innovations.
In the United States, the Courtroom of Appeals of the Federal Circuit (CAFC) held that on a simple looking at, the US Patent Act unambiguously demands an inventor to be a normal particular person and therefore, an AI process could not be named as inventor on a United States patent application, upholding the USPTO’s 2020 choice to reject the DABUS purposes and affirming the US District Courtroom for Japanese District of Virginia’s 2021 selection. Dr. Thaler submitted a combined petition for panel rehearing and rehearing en banc at the CAFC, which the CAFC denied. Dr. Thaler is established to file a petition for a writ of certiorari just before the Supreme Courtroom of the United States in advance of March 19, 2023.
In Australia, the Full Court docket of the Federal Court of Australia held that a patent software that lists an AI technique as an inventor does not comply with the Patent Polices, reversing the Federal Court’s 2021 conclusion which held that the Patents Act did not preclude an inventor from getting a non-human AI program. Dr. Thaler utilized for particular depart to enchantment this final decision to the Australian Large Court docket, but the attraction was dismissed, ending Dr. Thaler’s campaign in the region.
In the United Kingdom, Dr. Thaler used for permission to attractiveness the Court of Appeal’s 2021 break up conclusion which held that an inventor must be a individual. Authorization was granted in August of 2022 and the listening to is scheduled for March 2023.
In Germany, the Federal Court’s 2021 final decision to refuse the patent applications on the foundation that only natural folks can be specified as inventors has been appealed to the Supreme Court.
While in Europe, in 2021, the Authorized Board of Charm (the “Board”) of the European Patent Office environment (EPO) refused a European patent software listing DABUS as the sole inventor, in its written motives issued in 2022, the Board advised that the owner of an AI could be selected as an inventor of an AI-produced creation.
In Canada, the Canadian Mental Assets Business (CIPO) issued a non-compliance see in late 2021, asserting that because the inventor is a machine and it does not appear achievable for a device to have legal rights underneath the Canadian regulation or to transfer individuals rights to a human, the DABUS apps do not comply with the Patent Act and Principles. CIPO, nonetheless, did invite Dr. Thaler to submit a statement on behalf of the AI equipment and identify, in that assertion, himself as the authorized agent of the device.
In reaction, Dr. Thaler’s reps argued that according to the doctrine of possession by accession, due to the fact Dr. Thaler owns DABUS, it follows that he ought to also be the owner of invention(s) developed by DABUS and as a result, he should really be entitled to seek patent protection for innovations made by DABUS. Dr. Thaler’s reps also argued that in any situation, precluding innovations designed by artificial intelligence from patent security would stifle innovation. CIPO has not however commented on this place, but the apps have been considered Patent Cooperation Treaty (PCT) non-compliant for the time remaining.
The query of AI and inventorship is very likely to go on to be a topic of discussion in 2023, specifically with the rise of generative AI. Dr. Thaler and DABUS, even so, will possible proceed to deal with considerable troubles in convincing courts and the several mental house offices that DABUS can be named an inventor.
3. Developments in Topic Make any difference Eligibility for Personal computer-Executed Inventions
While the initial fifty percent of 2022 noticed few developments in the law of subject matter make a difference eligibility, the next 50 percent of the calendar year was marked by the Benjamin Moore selection of the Federal Court, which introduced a great deal notice and focus to the subject.
At play in this conclusion have been two of Benjamin Moore’s patent applications, related to computer-executed colour assortment procedures, both of which had been refused by the Commissioner.
Dependable with the 2020 Choueifaty conclusion, the Federal Court agreed that CIPO’s continued use of the problem-remedy approach was incorrect. Nonetheless, instead than remitting the purposes back to CIPO for reconsideration in light-weight of Choueifaty – the apps experienced been examined prior to that decision – the Courtroom instead instructed CIPO to stick to the framework proposed by the Mental Home Institute of Canada (IPIC), an intervener in the attractiveness.
Below IPIC’s 3-aspect framework, patent examiners are demanded to:
a) Purposively construe the assert
b) Check with no matter whether the construed claim as a complete is made up of only a mere scientific theory or abstract theorem, or irrespective of whether it comprises a simple application that employs a scientific principle or summary theorem and
c) If the construed claim comprises a useful application, assess the construed assert for the remaining patentability criteria: statutory classes and judicial exclusions, as very well as novelty, obviousness, and utility.
The Benjamin Moore circumstance was not without controversy, as the courtroom notably requested a govt agency to comply with a framework proposed by a experienced affiliation. The decision also raised thoughts 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 Legal professional Typical of Canada submitted a detect to attraction the Federal Court’s determination and the attraction is established to be listened to in February 2023. The Federal Courtroom of Attraction choice is eagerly awaited by each the Canadian patent practitioners and the applicants.
4. Amendments to the Canadian Patent Procedures
Amongst the most noteworthy news in Canadian patent law in 2022 was the coming into pressure in October of amendments to the Canadian Patent Guidelines, which launched crucial changes to patent prosecution in Canada.
A major adjust released by the amendments to the Patent Procedures is the introduction of surplus assert charges for statements in surplus of 20. If the amount of claims exceeds 20 at any time amongst the ask for for assessment and the payment of the ultimate charge, surplus claim fees will implement. Several dependent claims, however, continue on to be counted as single promises for the objective of calculating assert charges.
A 2nd important change to the Patent Rules is the introduction of a new ongoing evaluation method intended to limit the quantity of workplace actions. Beneath the new guidelines, a request for ongoing assessment together with the approved charge are required immediately after 3 business steps and subsequently, soon after every single two office environment steps to keep on prosecution of the software.
Other amendments contain the introduction of a established of adjustments to the observe of allowance method. A conditional discover of allowance can now be despatched to candidates when only small problems stay in the software. Nonetheless, when formerly, an applicant could ask for withdrawal of a discover of allowance to reopen prosecution and file supplemental amendments, the new Patent Principles now demand that a ask for for ongoing evaluation be submitted, accompanied by payment of the recommended charge.
Nevertheless the variations have started out to impression prosecution approaches in Canada in the months leading up to and given that the coming into pressure of the amendments, their entire consequences will undoubtedly be felt in 2023.