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9 CANADIANLAWYERMAG.COM/INHOUSE MARCH/APRIL 2019 how best to navigate third-party patent rights. The an- swer depends on the kind of AI technology at issue. Over the past 10 years, the U.S. Patent Offi ce has been issuing patents in ever-increasing numbers for fundamental AI technology based on the specifi c tech- nical details of machine learning functionality. This kind of AI has been long satisfying the evolving patent- able eligibility subject matter test for software invention in the U.S. for the reason that the fundamental AI has been considered to be "suffi ciently technical." In January, the U.S. Patent Offi ce issued revised guidelines that indicate as long as an abstract idea is "integrated into a practical application" it will be patent eligible. Embedded AI incorporates fundamental AI into conventional products and typically includes a variety of hardware elements. Showcasing the technical details and practical application of an embedded AI invention can improve chances of patentability under the traditional "suffi ciently technical" and more recent "integrated into a practical application" patent eligibility tests. Expert systems are a third kind of AI generally used to mine large volumes of data to generate a useful nu- merical result (e.g. stock price). This kind of AI is gen- erally harder to protect by patent due to its largely ab- stract nature. One strategy for expert system inventions is to describe the system and provide technical details on any "feedback control" aspects. Finally, AI is being harnessed to design and create new physical products, such as calculating the shape of a bicycle that has the most aerodynamic shape through shape optimization applied to user-defi ned specifi ca- tions. While the general rules of patentability apply to these AI-created physical products, there are open questions around inventorship and ownership that will need to be considered in the context of evolving patent legislation in various jurisdictions. IP in AI can be your competetive advantage. By ask- ing questions like those above, IP awareness will be embedded from strategic plainning to product develop- ment to monetization. IH Catherine ("Cat") Lovrics is a partner, lawyer and trademark agent at Bereskin & Parr LLP. Isi Caulder is a partner, lawyer and a registered patent and trademark agent with Bereskin & Parr LLP. Discover a team that is committed to quality and achieving success. With experts in trademark and patent law, Bereskin & Parr LLP provides practical and strategic solutions to help create, manage and enforce worldwide intellectual property portfolios while understanding your business needs. As Canada's top-tier IP firm, we consistently raise the benchmark for IP law. In the business of brilliance. bereskinparr.com BENCHMARK FOR IP Untitled-2 1 2019-03-04 3:44 PM

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