Canadian Lawyer

44 M A R C H 2 0 1 8 w w w . C A N A D I A N L a w y e r m a g . c o m mostly to high-profile technology com- panies like those mentioned above, that are developing AI-related algorithms. As with any other invention, an AI or software-based invention must be new, use- ful and non-obvious in order to be patent- able, says Caulder. "The fourth rule is subject matter: Is it too abstract or is it something concrete enough to be patentable? It must be applied enough and crystallized enough to be patentable subject matter." The importance of showing the tech- nicality of the invention in the patent appli- cation is key, IP lawyers acknowledge. The more technical the problem and solution that's being addressed by the patent appli- cation appears to be, the greater the likeli- hood that the Canadian Intellectual Prop- erty Office will conclude that the AI-related invention should be eligible for a patent, says Matthew Zischka, partner in Smart & Biggar/Fetherstonhaugh's Toronto office. "The applicant has to convince the [pat- ent] office that the computer is necessary or substantial for solving the particular prob- lem that's being addressed by the invention," Zischka says. "The patent office is [now] looking more carefully at applications to ensure that computer-implemented inven- tions aren't mere schemes, formulas or busi- ness methods, but that they amount to more technical advances in the computer space." Depending on the nature of the machine-learning algorithm, the patent office might determine that it amounts to a mere mathematical formula rather than an invention, he says. Alternatively, the office could conclude that the computer-imple- mented invention is a computer-imple- mented "business scheme" and, therefore, not patentable. At the same time, the pat- ent office is open to granting patents for machine-learning inventions, he says. In 2014, the United States Supreme Court released its decision in Alice Corp. v. CLS Bank International, which held that a computer implementation of an abstract idea, which is not itself eligible for a patent, does not by itself transform that idea into something that is patent-eligible. "In the U.S. in particular now, if an examiner or a court can characterize an invention as being an application of known mathematical algorithms or mathematical operations, you may not be able to get a pat- ent," says Roch Ripley, partner and head of the Vancouver Intellectual Property Depart- ment of Gowling WLG in Vancouver. "And if you get a patent, the courts have been invalidating . . . software patents generally, at much higher rates. That's a big problem." Europe used to be a jurisdiction in which it was more difficult to get a soft- ware patent because the courts "applied a technical-effect test," Ripley says. "Did your invention result in a technical effect?" Now, he says, the European test is easier to satisfy than the American one. Under the subject matter framework laid out by the U.S. Supreme Court in Alice, courts have been denied patent protection and invalidated patents, Caulder agrees, for software-implemented inventions on the basis that they are directed to a law of nature, natural phenomenon or an abstract idea and that the claims do not recite "sig- nificantly more." However, she adds, a number of Federal Circuit cases following Alice have provided an avenue to address concerns over patent rejections. L E G A L R E P O RT \ I N T E L L E C T U A L P R O P E RT Y This is more than a phone book. With Canadian Law List 2018 you have access to: • an up-to-date alphabetical listing of more than 80,000 barristers, solicitors and Quebec notaries, corporate counsel, law firms and judges across Canada • all contact information supplied for the Supreme Court of Canada, the Federal Court of Canada, Federal Cabinet Ministers, departments, boards, commissions and Crown Corporations • legal and government contact information related to each province for the Courts of Appeal, Supreme Courts, County and District Courts, Provincial Courts, law societies, law schools, Legal Aid and other important law-related offices Continually updated by a dedicated team of professionals, Canadian Law List includes value added features such as: • last name first identification in the federal and provincial listings • separate section of corporate law departments for more than 1,250 companies • professional cards of prominent Canadian law firms ORDER YOUR COPY TODAY! Call 1.800.387.5164 or visit www.carswell.com for a 30-day no-risk evaluation KEEPING PACE WITH THE CHANGING LEGAL COMMUNITY Hardbound • Published February each year • L7798-7859 • On subscription $179* • One time purchase $199* Multiple copy discounts available * Plus shipping/handling and applicable taxes Untitled-2 1 2018-02-13 4:10 PM

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