The year 2022 brought significant changes to the Canadian patent law, including updates to the Patent Rules and developments relating to subject matter eligibility. Globally, the question of artificial intelligence (AI) and inventorship remained a contentious topic. As digital technology continued to evolve in 2022, the interest in areas such as the metaverse and related fields saw an upward trend, as evidenced by increase in the number of patent filings.
In this article, we review some key highlights on the topics of: 1) patents and the metaverse; 2) AI and inventorship; 3) subject matter eligibility for computer-implemented inventions; and 4) amendments to the Canadian Patent Rules.
1. Patents and the Metaverse
The metaverse continued to be an important topic of discussion and curiosity in 2022. This trend has also been reflected in the patent world, with metaverse-related patent filings being on the rise. A recent report by a consulting firm specializing in the detection and analysis of emerging innovation shows that patent filings for metaverse-related technologies have doubled since 2018, with Microsoft and Samsung leading the pack.
Many other high-profile companies, such as Magic Leap, IBM, Unity, Roblox, Meta and Apple are also filing patent applications for metaverse-related technologies, with most companies pursuing patent protection for hardware and software augmented reality (AR), mixed reality (MR) and virtual (VR) applications, and more specifically in the areas of pattern recognition, 3D model manipulation, head-mounted optical devices, and interactions with the human body.
In the past few years, for example, Microsoft has filed a number of patent applications directed to VR and MR technologies, and in 2022, Microsoft launched ‘Mesh for Microsoft Teams’, a solution that combines the mixed reality capabilities of Microsoft Mesh with the features available in Microsoft Teams and aims to “make collaboration in the ‘metaverse’ more fun”.
Roblox Corporation, the company behind the successful online game platform has also begun filing patent applications directed to manipulating 2D and 3D assets while Meta has expanded into wearables for interacting with virtual objects.
As the concept of the metaverse continues to develop, and adoption becomes more widespread, metaverse-related patent filings will surely continue to increase.
2. AI as an Inventor
In 2022, the question of whether an AI can be an inventor, raised by the DABUS (Device Autonomously Bootstrapping Uniform Sensibility) patent applications, continued to make its way through the various courts and intellectual property offices.  As a refresher, DABUS is an AI system developed by Dr. Stephen Thaler, that can allegedly autonomously create inventions.
In the United States, the Court of Appeals of the Federal Circuit (CAFC) held that on a plain reading, the US Patent Act unambiguously requires an inventor to be a natural person and consequently, an AI system could not be named as inventor on a United States patent application, upholding the USPTO’s 2020 decision to reject the DABUS applications and affirming the US District Court for Eastern District of Virginia’s 2021 decision. Dr. Thaler filed a combined petition for panel rehearing and rehearing en banc at the CAFC, which the CAFC denied. Dr. Thaler is set to file a petition for a writ of certiorari before the Supreme Court of the United States before March 19, 2023.
In Australia, the Full Court of the Federal Court of Australia held that a patent application that lists an AI system as an inventor does not comply with the Patent Regulations, reversing the Federal Court’s 2021 decision which held that the Patents Act did not preclude an inventor from being a non-human AI system. Dr. Thaler applied for special leave to appeal this decision to the Australian High Court, but the appeal was dismissed, ending Dr. Thaler’s campaign in the country.
In the United Kingdom, Dr. Thaler applied for permission to appeal the Court of Appeal’s 2021 split decision which held that an inventor must be a person. Permission was granted in August of 2022 and the hearing is scheduled for March 2023.
In Germany, the Federal Court’s 2021 decision to refuse the patent applications on the basis that only natural persons can be designated as inventors has been appealed to the Supreme Court.
While in Europe, in 2021, the Legal Board of Appeal (the “Board”) of the European Patent Office (EPO) refused a European patent application listing DABUS as the sole inventor, in its written reasons issued in 2022, the Board suggested that the owner of an AI could be designated as an inventor of an AI-generated invention.
In Canada, the Canadian Intellectual Property Office (CIPO) issued a non-compliance notice in late 2021, asserting that because the inventor is a machine and it does not appear possible for a machine to have rights under the Canadian law or to transfer those rights to a human, the DABUS applications do not comply with the Patent Act and Rules. CIPO, however, did invite Dr. Thaler to submit a statement on behalf of the AI machine and identify, in that statement, himself as the legal representative of the machine.
In response, Dr. Thaler’s representatives argued that according to the doctrine of ownership by accession, since Dr. Thaler owns DABUS, it follows that he must also be the owner of invention(s) produced by DABUS and therefore, he should be entitled to seek patent protection for inventions produced by DABUS. Dr. Thaler’s representatives also argued that in any case, precluding inventions developed by artificial intelligence from patent protection would stifle innovation. CIPO has not yet commented on this position, but the applications have been deemed Patent Cooperation Treaty (PCT) non-compliant for the time being.
The question of AI and inventorship is likely to continue to be a topic of discussion in 2023, especially with the rise of generative AI. Dr. Thaler and DABUS, however, will likely continue to face significant challenges in convincing courts and the various intellectual property offices that DABUS can be named an inventor.
3. Developments in Subject Matter Eligibility for Computer-Implemented Inventions
While the first half of 2022 saw few developments in the law of subject matter eligibility, the second half of the year was marked by the Benjamin Moore decision of the Federal Court, which brought much attention and focus to the topic.
At play in this decision were two of Benjamin Moore’s patent applications, related to computer-implemented colour selection methods, both of which had been refused by the Commissioner.
Consistent with the 2020 Choueifaty decision, the Federal Court agreed that CIPO’s continued use of the problem-solution approach was incorrect. However, rather than remitting the applications back to CIPO for reconsideration in light of Choueifaty – the applications had been examined prior to that decision – the Court instead instructed CIPO to follow the framework proposed by the Intellectual Property Institute of Canada (IPIC), an intervener in the appeal.
Under IPIC’s 3-part framework, patent examiners are required to:
a) Purposively construe the claim;
b) Ask whether the construed claim as a whole consists of only a mere scientific principle or abstract theorem, or whether it comprises a practical application that employs a scientific principle or abstract theorem; and
c) If the construed claim comprises a practical application, assess the construed claim for the remaining patentability criteria: statutory categories and judicial exclusions, as well as novelty, obviousness, and utility.
The Benjamin Moore case was not without controversy, as the court notably ordered a government agency to follow a framework proposed by a professional association. The decision also raised questions about the separation of powers and the intent of Parliament, the Court’s interpretation of the Patent Act, and the unequivocal nature of the IPIC framework.
The Attorney General of Canada filed a notice to appeal the Federal Court’s decision and the appeal is set to be heard in February 2023. The Federal Court of Appeal decision is eagerly awaited by both the Canadian patent practitioners and the applicants.
4. Amendments to the Canadian Patent Rules
Amongst the most noteworthy news in Canadian patent law in 2022 was the coming into force in October of amendments to the Canadian Patent Rules, which introduced important changes to patent prosecution in Canada.
A significant change introduced by the amendments to the Patent Rules is the introduction of excess claim fees for claims in excess of 20. If the number of claims exceeds 20 at any time between the request for examination and the payment of the final fee, excess claim fees will apply. Multiple dependent claims, however, continue to be counted as single claims for the purpose of calculating claim fees.
A second important change to the Patent Rules is the introduction of a new continued examination procedure intended to limit the number of office actions. Under the new rules, a request for continued examination along with the prescribed fee are required after three office actions and subsequently, after every two office actions to continue prosecution of the application.
Other amendments include the introduction of a set of changes to the notice of allowance procedure. A conditional notice of allowance can now be sent to applicants when only minor defects remain in the application. However, while previously, an applicant could request withdrawal of a notice of allowance to reopen prosecution and file additional amendments, the new Patent Rules now require that a request for continued examination be filed, accompanied by payment of the prescribed fee.
Though the changes have started to impact prosecution strategies in Canada in the months leading up to and since the coming into force of the amendments, their full effects will certainly be felt in 2023.