Brion Raffoul LLP
How are developments in AI and machine learning shaping the Canadian IP landscape?
Canada is a leading country in AI and machine learning innovation. In 2020 the Global Partnership on Artificial Intelligence between Australia, Canada, the European Union, France, Germany, India, Italy, Japan, Mexico, New Zealand, Singapore, Slovenia, South Korea, the United Kingdom and the United States announced that one of the two centres of expertise would be in Montreal, Canada. Considering the AI expertise in Canada and the economic importance of intellectual property and data in generating wealth, various levels of the Canadian government are reviewing patent trends to ensure that valuable intellectual property is protected through patents. Too often Canadian companies opt for a fully open or trade secret approach to intellectual property in AI without properly understanding the IP landscape, including their competitors’ intellectual property. Educating the AI community remains key – it is often surprised to learn what is patentable or that a patentee can be its own lexicographer.
What advice would you offer a Canadian tech start-up looking to monetise its assets overseas?
Our advice is typically informed by answers to a series of questions. What is the monetisation goal? For example, are you looking for a partner overseas, a licence for your intellectual property or a complete sale of your intellectual property and perhaps your business? The monetisation process usually starts with an international patent search and a product search. Once we have identified competitors with overlapping or related IP rights, or products that read on our patent(s), we might immediately move forward with a strategy to approach one or more companies. However, searching also often identifies gaps in the scope of clients’ patents and we usually spend considerable time refining the patent scope to improve the value of the asset(s) before any monetisation advances are made.
Which of your cases have been the most memorable and why?
This year, I was pleased to finally obtain a software patent after a 10-year engagement with the USPTO. The application had moved through the changing US legal framework around patentable subject matter for computer-implemented inventions. We iterated the claim sets through the Bilski and Alice US Supreme Court decisions, and subsequently through the various guidelines issued by the USPTO and US federal circuit case law (both of which have evolved in recent years), to produce a successful line of argument on patentable subject matter that our system “amounted to significantly more” than existing technology and had a “practical application”.
You have been appointed to the Ontario government’s only expert panel on commercialising intellectual property in the region. What steps can the government take in this area and how likely is Canada to develop its approach to patenting?
The Canadian government recognises that over 90% of company wealth today resides in intellectual property and data. Given the importance of holding intangible stock assets, the government has established a patent collective for innovation in green technology and there are discussions underway to expand this to other areas, such as AI, advanced manufacturing, resource extraction and agriculture, where Canada has a track record of ingenuity and commercial success. There is a renewed focus by the federal and provincial governments to increase commercialisation in areas where Canada can produce world-class products. Our expert panel to the Ontario government has moved into its implementation phase. We are now working to develop a framework for a centralised resource in Ontario that will provide expert advice on intellectual property and education to Ontarian companies. For example, it may assist companies in accumulating registered IP assets and potentially acquire defensive patent assets for them.
Can you tell us more about your community and charity work?
I have always believed in giving back to my community. As a family, my children and I have packed food hampers for needy families during the holidays and have participated in walks and runs for various causes. I am also an active member of The Ottawa Hospital Foundation Board, which supports the major network of hospitals in Ottawa. I am currently acting as chair of the Governance Committee, as well as serving on the emergency Covid-19 Committee. The Ottawa Hospital is one of the largest research hospitals in Canada in terms of research dollars, and it has been a passion of mine to support its cutting-edge research. Brion Raffoul LLP is also endowing a multi-year donation to the University of Ottawa’s Faculty of Engineering Maker Launch programme to help start-ups succeed commercially. I am enjoying this advisory work alongside other advisers who are leading or have led successful companies, such as Shopify.
Natalie Raffoul is a world-renowned IP lawyer and patent agent with particular expertise in patenting software and IP licensing. She has been consistently ranked among the world’s leading patent practitioners in the IAM Patent 1000 annually since 2014 and has been shortlisted as one of the most highly recommended patent prosecutors in Canada. In 2020 she was recognised in IAM Strategy 300: The World’s Leading IP Strategists. Ms Raffoul obtained a degree in electrical engineering from Western University and holds a JD in law from Queen’s University.
Click here to see her IAM Patent 1000 2020 profile.