Amendments to the Patent Rules Coming into Force October 3, 2022

Rules amending the Canadian Patent Rules were recently registered on June 2, 2022. The amendments will largely come into force on October 3, 2022.

The most significant changes include the introduction of excess claims fees and requests for continued examination. These changes apply to patent applications for which a request for examination is filed on or after October 3, 2022.

For applicable patent applications, excess claims fees are payable at the time of filing a request for examination and/or when the final fee is paid. Each claim in excess of 20 that is included in the application at any time during the period between the request for examination and the payment of the final fee is relevant in the calculation of the excess claims fees. Any excess claims fees that were not paid with the request for examination will be due at the time of payment of the final fee. This means that if the number of claims in an application is in excess of 20 at any point during prosecution of the application, excess claims fees apply on each of those excess claims even if the number of claims in the application is 20 at the time of filing a request for examination and at the time of paying the final fee. Each excess claim over 20 is CAD $100, or CAD $50 if the applicant qualifies as a small entity under the Patent Rules.

Also for applicable patent applications, the amendment introduces the requirement of filing a request for continued examination along with a prescribed fee to respond to a third office action, and every second office action thereafter. The fee for each request for continued examination is CAD $816, or CAD $408 if the applicant qualifies as a small entity.

See the full text of the Rules Amending the Patent Rules here.

USPTO Announces Climate Change Mitigation Pilot Program

The USPTO recently announced a Climate Change Mitigation Pilot Program that will prioritize the review of patent applications for technologies that mitigate climate change. Petitions for prioritization will be granted where one or more claims include a product or process that reduces greenhouse gas emissions. This pilot program will run for 367 days, starting June 3, 2022, or until 1,000 petitions are granted.

The program stems from the January 27th, 2021 White House Executive Order directed at tackling the climate crisis in America and globally. This program supports the Executive Order’s call for intensification of development, commercialization, and deployment of clean energy technologies. Other programs stemming from the Executive Order include a grant program for electric vehicle infrastructure and a pilot program for transit-oriented development planning.

35 USC § 101 may go to US Supreme Court (Again)

The US Solicitor General has filed a brief recommending the US Supreme Court review a Federal Circuit’s decision in American Axle v. Neapco Holdings. In that case, American Axle claimed a manufacturing method for an automobile drive shaft that uses one or more liners “tuned” to reduce the drive shaft’s vibration for noise reduction (see US 7774911 B2). In a divided ruling, the Federal Court ruled that the patent is ineligible under 35 USC § 101 because it was directed to a natural law (Hooke’s Law) and “nothing more.” The majority viewed the claims as simply requiring application of Hooke’s law without specifying how to achieve that result, and since it only recited the desired result the invention was not patentable.

Judge Kimberly Moore, in dissent, argued the majority was creating a new test (the “Nothing More” test), removing the second of the two steps from the Alice/Mayo test, with “the majority reject[ing] the notion that  claims which contain an “innovative concept” survive the gatekeeper.” Judge Moore believes that the majority is expanding 35 USC § 101 past the gatekeeping role, and has conflated it with the enablement requirement of 35 USC § 112.

American Axle petitioned for a rehearing, which the Federal court rejected with a “bitterly divided” 6-6 vote, with 2 concurring and 3 dissenting opinions. American Axel petitioned to be heard by the Supreme Court in December 2020, and in May 2021 the Court called for the views of the US Solicitor General. The Solicitor General has now responded positively, suggesting the Supreme court hear the case. The Solicitor General’s recommendation may hint at the current administration’s position on patent eligibility, which seems to be leaning towards a more patent-friendly interpretation of  35 USC § 101 (read the brief here), with comments such as emphasizing that all inventions rest at some level on laws of nature or other abstract ideas, meaning the principles of 35 USC § 101 must be applied carefully “lest it swallow all of patent law.”

More information here.

IP Assist Funding from IRAP

As part of Canada’s commitment to intellectual property, the National Research Council offers an IP Assist program, including financial support, for qualifying start-ups.  The first tranche of funding is available to assist in developing an IP strategy for the business and the second tranche supports more detailed tactical analysis and clearances.

We are happy to help clients navigate the funding proposals by quoting for our services as part of either phase of the funding process.

WIPO holding Symposium on Trade Secrets and Innovation 2022

The World Intellectual Property Office (WIPO) will host the Symposium on Trade Secrets and Innovation on May 23rd and 24th.  The Symposium provides a forum for ideas relating to trade secrets and innovation in both technological and service sectors. The Symposium will be in hybrid format.

Learn more about it here.

Copyright term extension is on the horizon in Canada under proposed amendments to the Copyright Act

It may soon be time to budget an additional 20 years to copyright terms in Canada.

Bill C-19, “An Act to implement certain provisions of the budget tabled in Parliament on April 7, 2022 and other measures” (Budget Implementation Act, 2022, No. 1), had its first reading in Parliament on 28 April 2022. The Bill includes proposed amendments to the Copyright Act extending the term of copyright by 20 years from the life of the author plus 50 years to the life of the author plus 70 years. This proposed extension in copyright term would satisfy Canada’s obligations under the Canada-US-Mexico Agreement.

As of 4 May 2022, the Bill’s second reading is in progress.

See the text of Bill C-19 and track its progress here.

Government of Canada marks World IP Day through two IP-related initiatives

Each year on April 26, the global intellectual property community celebrates World Intellectual Property Day. The event was established by the World Intellectual Property Organization (WIPO) in 2000 as an opportunity to highlight the role played by IP rights in encouraging innovation and creativity.   April 26th was chosen as the day to celebrate World Intellectual Property Day as it coincides with the date when the convention establishing the World Intellectual Property Organization came into effect in 1970.

To mark the World IP Day, the Honourable François-Philippe Champagne, Minister of Innovation, Science and Industry, launched a call for proposals for ElevateIP[1].  ElevateIP was introduced through Budget 2021 as a four-year, $90 million program designed to provide funding to business accelerators and incubators (BAI) and BAI networks, “to provide the tools Canadian start-ups need to better protect, strategically manage and leverage their IP”.  With ElevateIP funding, BAIs can offer start-ups individualized IP programming in three key areas: the development of IP strategies, the implementation of IP strategies, and IP education and awareness.  The call for proposals will close on June 28, 2022.

Minister Champagne also announced the recipients of the 2021-2022 Indigenous Intellectual Property Program (IIPP) grant[2].  The IIPP grant provides funds for Indigenous organization for funding travel, small-scale initiatives and projects related to intellectual property, Indigenous knowledge and Indigenous cultural expressions.  This year five organizations received a total of $116,665 under the IIPP grant.

[1] https://ised-isde.canada.ca/site/elevateip/en

[2] https://www.ic.gc.ca/eic/site/108.nsf/eng/h_00010.html

 

Authoring A.I.

Lawrence Chan

A recent news update on our website reported that the Canadian Intellectual Property Office (CIPO) has recently issued a copyright registration where one of the (two) authors named for the work is an artificial intelligence (AI) program. This raises the question of how well (if at all) the Copyright Act[i] (the “Act”) is equipped to deal with non-human authorship of works.

As a starting point, the term “author” is not defined in the Act. However, several provisions in the Act strongly suggest that an author must be a natural person. For example, the Act provides that the term of copyright is the life of the author plus fifty years[ii]. Obviously, where the author is not a natural person, it would be impossible to determine this term. Even in the case of joint authors where only one of the authors is not a natural person (such as in the copyright registration recently issued), problems arise. For works of joint authorship, the term of copyright lasts until fifty years after the last author dies[iii]. Given that software can presumably last indefinitely, perhaps naming an AI program as a co-author would be a creative way to indefinitely extend the length of copyright in a work?

The Federal Court of Appeal has also dealt with this issue, albeit not directly. In P.S. Knight Co. Ltd. v. Canadian Standards Association[iv], the Court was addressing one of the presumptions in the Act (section 34.1.(2)(a)) relating to authorship, namely that if a name purporting to be that of the author is printed in the usual manner, that person would be presumed to be the author. The Court held that the Canadian Standards Association (CSA) was not entitled to the presumption:

“The term “author” is not defined in the Copyright Act, but it undoubtedly refers to a natural person. Copyright subsists for “the life of the author, the remainder of the calendar year in which the author dies, and a period of fifty years following the end of that year”: Copyright Act, s. 6 [emphasis added]. As a corporation, capable of only metaphorical life and death, the CSA cannot benefit from the presumption in paragraph 34.1(1)(a) of the Copyright Act.”

Although the Court was only addressing whether a corporation could be considered an author, it would seem that similar considerations apply to other non-human authors, including an AI program.

Also of importance is the question of subsistence of copyright. The Act provides that copyright subsists in every “original literary, dramatic, musical and artistic work…”[v]. “Original” is not defined in the Act; however, the Supreme Court of Canada has held that an original work must be the product of an author’s exercise of skill and judgment (CCH Canadian Ltd. v. Law Society of Upper Canada[vi]). This is not necessarily a difficult bar to meet. In particular, a work need not be creative in order to qualify for copyright protection. It is an open question as whether an AI program would be able to inject the necessary “skill and judgment” a work for it to qualify for copyright protection. The concept of “judgment” is directly related to one of the objectives of AI – the ability to make decisions in a way that simulates human intelligence. As AI technology progresses, it may be difficult to differentiate between the “judgment” of a human author and that of an AI program.

One further issue has to do with moral rights. The Act provides protection for an author’s moral rights, which relate to, among other things, the author’s right to the integrity of the work. The author’s moral rights are only infringed when certain acts occur (e.g. distortion or mutilation of the work) to the prejudice of the author’s honour or reputation[vii]. For authors that are AI programs, this raises the question of when would an AI program’s honour or reputation be prejudiced? Is it even possible for a software program to have honour or reputation? Corporations are sometimes considered to least have reputations (and perhaps even honour) – it would seem plausible for AI programs to have reputations as well.

In view of some of the issues raised, the Canadian government recently conducted consultations regarding AI and its applicability to the copyright framework. It is likely that amendments to the Act will be necessary in order to adequately accommodate AI into copyright.

 

[i] R.S.C. 1095, c. C-42

[ii] Section 6, Copyright Act

[iii] Section 9(1), Copyright Act

[iv] 2018 FCA 222

[v] Section 5, Copyright Act

[vi] 2004 SCC 13

[vii] Section 28.2(1), Copyright Act

USPTO Launches New Pro Bono Program

The United States Patent and Trademark Office (USPTO) is launching a new pro bono program in collaboration with the PTAB Bar Association. The goal of the program is to provide legal assistance to under-resourced inventors starting with assistance with ex parte appeals before the Patent Trial and Appeal Board (PTAB) (e.g. a review of an Examiner’s final rejection of a patent application by the PTAB). Applications for participation in the program will be accepted as of June 1, 2022.

Read more here.

Federal Court dismisses copyright infringement case involving photos of Jennifer Lopez

The Plaintiff August Image LLC (“August”) is a photographic syndication agency. It claimed to have acquired exclusive rights to license 6 photos of Jennifer Lopez taken by celebrity photographer Joe Pugliese.

August asserted that the Defendant airG Inc. (“airG”) infringed the copyright in the photos by reproducing them on its website without August’s authorization.

The action proceeded as a simplified action where evidence is adduced by affidavit. Interestingly, airG chose not to cross-examine any of August’s witnesses, nor adduce any evidence of its own. Instead, they objected to the admissibility of almost all the evidence tendered by August and argued that August had failed to meet its burden of proof in respect of nearly all the elements of the cause of action.

The Court concluded that August had failed to meet its burden to prove that Mr. Pugliese was a resident or citizen of the U.S. (or any other Berne Convention country) at the time the photos were created to establish that copyright subsisted in the photos, which was fatal to August’s action.

Read the full decision here.

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