Canadian Lawyer

w w w . C A N A D I A N L a w y e r m a g . c o m M A R C H 2 0 1 8 45 Zischka calls the Canadian patent office approach "a little different." In the Alice decision, he says, the U.S. Supreme Court applied a four-step test that was difficult to meet. But Canada's approach is to look at the claim that's presented in the patent application "as a whole. . . . Does the solu- tion require tangible computer elements? If it does, they generally consider that the claim is patent-eligible." Market and enforceability Ridout & Maybee's Martin cites infringe- ment detectability as a significant factor in patent protection. Data services are now central to our economy, and AI is beginning to move in on that, he says. "Data sensors are becoming omnipresent. Most patent agents have to be aware of this technology" as it develops in every industry. The best patents are the ones that will be infringed upon by competitors and are detectable, Martin points out. There are administrative procedures that have been introduced since 2013 called post-grant review and inter partes review that give alleged infringers avenues to invalidate patents, Ripley says. If a case for patent infringement goes to court, defend- ants can also try to invalidate a patent using a summary procedure on the basis that it's directed at an ineligible subject matter: an abstract idea. Procedures available to make a summary judgment change "the econom- ic consideration," he notes. "When we draft [patent applications] now," says Ripley, "we're careful to include a lot of technical detail, because if you can really establish that the invention results in technical benefits, then you've got a much better chance of surviving any invalidity challenge." Advising prospective patent holders The patent application presented before the Canadian patent office can't read like a sales document but like a technical document providing some sort of solution to a prob- lem that's technical in nature, Zischka says. "We impress on [clients] 'we won't start working on a patent application for you unless there's real technology there,'" says Caulder. "You want to see if what you're building is creating a useful, concrete and tangible result. What is the result of the machine you've built? AI or machine learn- ing involves a training model, developing and then running it and showing results." Canada is a hub of AI activity, but the valuable patents and intellectual property will come from the use of AI to solve a specific commercial need, Martin says. He also advises his clients to imagine how they would feel if a competitor applied to patent an invention similar to one they were devel- oping. Hopeful patent holders should "get things filed as soon as possible, before tech- nology moves on and you get leapfrogged." "I try to really dig into the details," says Ripley. "You want to be careful not to just abstract the invention at a black-box level if you can avoid it. The more low-level discus- sions you can include, I think, the better for the purposes of validity." The overall message of patenting AI, he adds, is that "it's gotten more difficult over the last few years, and you need to take more care in drafting a solid application. That's how I see it." Bright minds protecting bright ideas since 1893 A Top 10 Intellectual Property Boutique, as voted by Canadian Lawyer magazine! We understand the business of innovation and the vital role that IP plays in today's competitive, market-driven economy. Celebrating 125 years as Canada's IP firm! ridoutmaybee.com TORONTO | OTTAWA | BURLINGTON ntitled-3 1 2018-02-07 2:18 PM

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