Canadian Lawyer InHouse

MARCH/APRIL 2019 8 INHOUSE Intellectual Property By Catherine Lovrics and Isi Caulder Best practices to manage AI risk with IP What can be protected and how to deal with third-party patents? C ompanies implementing artifi cial intelligence technology often face unique intellectual prop- erty issues. There are distinct challenges to de- vising a strategic and cost-effective IP plan for AI. Determining risk tolerance when developing strate- gies to protect one's own investment in AI and navigat- ing third-party IP rights may not be straightforward. So, what questions should companies be asking as they implement AI? Here are some initial considerations to spark embedding IP awareness within your enterprise. WHAT TO CONSIDER WHEN BRANDING AND CLEARING YOUR AI If you are at the drawing board, keep in mind that some trademarks are inherently stronger than others. Coined words and words that have no connection to AI will be inherently stronger. Words that are common and de- scriptive of AI are likely to be more challenging and expensive to clear and protect. The word "smart," for example, is arguably now synonymous with "artifi cial intelligence." This has resulted in numerous "smart" AI marks. If you are considering a "smart" mark, your mark, as a whole, must be both distinctive and regis- trable. Your mark will need to peacefully coexist with more than 1,500 other smart marks on the Register. Your "smart mark" also should not clearly describe your AI, nor should it mislead consumers. Another trend, often with virtual digital assistants, is literally name brands, such as Amazon's ALEXA, Apple's SIRI and Hanson's SOPHIA marks. This presents inter- esting challenges since you generally want to avoid using your marks as nouns. If you do "name" your AI, it will be important to ensure that the name presents as a trade- mark and remains distinctive. For example, use a ™ sym- bol and legend and set the name apart from surrounding text. There can be registrability issues with names (more so with full names and surnames than given names). For trademark clearance purposes, if you are committed to naming your AI, try to pick a name that has another meaning or coins a name (SIRI is said to be an acronym for "Speech Interpretation and Recognition Interface"). Finally, turn your mind to domain names. Don't despair if your .com is not available because there are specifi c domains that are being marketed for the AI in- dustry, including .ai and .io. There are other options to consider, too (i.e. .app, .tech, .digital). Whatever the mark you are considering, have your counsel conduct a search to confi rm the mark is available for use and registration in the jurisdictions of interest. Clearing AI inputs may feel like walking through a minefi eld. There are several considerations. Are the in- puts protected by copyright and are you infringing by text and data mining — or TDM? Most text mining will involve a copyright-protected work. Data mining is more diffi cult, and the focus will often be on whether there is an "original" database and whether the data mined is a substantial part. Do you have a "user right" to text and data mine? In Canada, while there is currently no spe- cifi c exception for TDM, TDM activities may be permit- ted for research purposes and commercial research may qualify. Did you circumvent a technological protection measure to access or copy the inputs? Are you violating terms of use, a confi dentiality or oth- er agreement? IP protections are often shored up by using TPMs (e.g. digital locks and encryption), and many com- panies rely on contractual restrictions and/or keep data confi dential, too. If your inputs include personal informa- tion, are you complying with privacy laws? Answering "maybe" to any of the above questions raises a clearance issue for the inputs and your text and data mining activi- ties, and it is advisable to confer with counsel. AI is often used to "create" and, often, the output is presumed to be protected by copyright. Sometimes, AI is a "tool" and, sometimes, it's a "medium" for human cre- ation. Other times, AI may appear to be creating autono- mously. AI involved in the creation process can raise in- teresting questions as to whether or not copyright subsists in the resulting work. Does AI displace human author- ship? Are works created using AI "original" (in the legal sense)? In Canada, the prudent course would be to ensure there is some element of human authorship before a work created using AI is published or otherwise disseminated. WHAT KIND OF AI CAN BE PROTECTED BY PATENTS? Patents protect the functionality of inventions that are new, non-obvious, useful and which consist of patent- eligible subject matter. Patents are used to strategically achieve or maintain a position in the marketplace, increase share value and/or secure investment. Many companies are unsure what aspects of their AI may be patentable and

• Cover