The annual event featured panels on new tech’s effects on patent law
The 11th Annual Patent Colloquium was held at the University of Toronto Faculty of Law on Friday, November 11, 2022. This marked the first in-person colloquium since 2019. Over 100 individuals attended the event in person and online.
As in previous years, the Patent Colloquium aims to serve as a forum for intellectual property (IP) law practitioners to discuss new and controversial issues in Canadian patent law, and how it affects their work. Each panelist provides a brief presentation on the major points for their topic, followed by a moderated discussion with the audience.
This year, the panels explored patent law’s response to emerging technologies. This included panels on the new patentability requirements for computer-implemented inventions (CIIs), the impact of artificial intelligence (AI) on patent law, and the status of the “inventive concept” in Canada.
The first panel was moderated by Justice Manson of the Federal Court and included Matt Norwood (Ridout & Maybee LLP), Isi Caulder (Bereskin & Parr LLP), and Kevin Siu (Gilbert’s LLP). Determining the patentability of CIIs is difficult, since section 27(8) of the Patent Act excludes “any mere scientific principle or abstract theorem” from being patented. It is unclear where computer algorithms fall in this category.
The panelists focused their discussion on the recent decision Benjamin Moore & Co v Canada (Attorney General), 2022 FC 923 (“Benjamin Moore”). Here, the Federal Court overturned the decision of the Commission of Patents and set out a new legal framework for assessing subject matter eligibility that focused on purposively construing the claims, assessing if there is a practical application of any scientific principle or abstract theorem, and, if so, assessing the claim on the basis of other patentability requirements (i.e., novelty, obviousness, and utility). This marked a development from Choueifaty v Canada (Attorney General), 2020 FC 837 (“Choueifaty”). The panelists noted that while Choueifaty also rejected the controversial “problem-solution” approach, the Canadian Intellectual Property Office (CIPO) continued to apply the old test, which led to Benjamin Moore. It will be interesting to see how (or if) CIPO changes their practices given the new case law.
The second panel focused on the question of whether AI can be the inventor. This is especially a concern for patent law where one of the requirements to be granted a patent is disclosure from the inventor. If an AI created an invention, can we justify granting it a monopoly? Moderated by Emily Kettel (Bennett Jones LLP), the panel consisted of Jordana Sanft (Lenczner Slaght LLP), Gervas Wall (Deeth Williams Wall LLP), and Brian Chau (Norton Rose Fulbright Canada LLP). They discussed how different jurisdictions are grappling with this question, with most arguing that AI cannot be the inventor, at least for the purposes of patent law. Canada has yet to comment on the debate. Some of the audience members raised that while the topic is theoretically very interesting, in practice, it is unlikely this would ever pose an issue for their clients as they would advise them to just name themselves or another human as the inventor on patent applications.
The final panel looked at the status of the “inventive” concept in Canada. This was moderated by Justice Russel Zinn of the Federal Court and included Yoon Kang (Smart & Biggar LLP), Ron Dimock (Gowling WLG), and Meghan Dureen (Sprigings Intellectual Property Law). The “inventive concept” has been raised in recent Canadian jurisprudence to invalidate patent claims on the basis that the invention claimed is obvious. However, there is no consensus on how and when to assess the inventive concept. The panelists discussed how the inventive concept differs from traditional claim construction and the unique problems it raises in drafting valid patents. While Kang pointed out that parties in most cases agree on the inventive concept, the panelists still noted that it is problematic that this concept exists without an explicit statutory basis, and can be used to invalidate an otherwise valid patent.
The patent colloquium is hosted every year by the Centre for Innovation, Law and Policy. New this year, the Faculty’s Legal Innovation and Technology (LIT) Group was heavily involved in organizing and running the event. They expect to continue their collaboration for future colloquiums.
Editor’s Note: Sabrina Macklai (3L JD/MI) is the co-founder of the Legal Innovation & Technology Group (https://lit-group.ca), which helped organize this year’s annual patent colloquium.
