What are the biggest differences between subject-matter eligibility in Canada and the United States?
Patentable subject matter remains a hot topic on both sides of the border. Interestingly, Canada’s Patent Act was modelled after the US Code with regard to patent law. As such, the definition of ‘invention’ under 35 USC §101 is very similar to the definition in Canada under Section 2 of the Patent Act. The intent of both legislatures at the time of drafting was to ensure that the definition of invention would be broad enough to cover new classes of innovation that were beyond the comprehension or foresight of the drafters at the time. However, innovators continue to test the outer edges of what subject matter may be patentable.
Computer-implemented inventions is one notable area in which US courts, under the Alice decision, and the Canadian courts, under the Amazon and Choueifaty decisions, have more recently diverged. Under Canadian patent law, if a computer is deemed an essential element of a patent claim through a purposive construction, the physicality requirement of subject matter may be met. This Canadian test may be likened to the former US test that required a showing of machine or transformation. In the United States, the patentable subject matter requirements go further and are more specific for practical applications.
Another subject-matter eligibility distinction is that, unlike the United States, Canada does not allow the patenting of methods of medical treatment. While claims for the use of medical products are patentable in Canada, use claims are generally narrower and must avoid active application steps.
How do you manage expectations and maintain close working relationships with clients when the stakes are so high?
As a starting point, I believe that regular communication with clients is key. There is no substitute for a telephone conversation or a video conference (as has become more of the custom these days as a result of the pandemic). But, given video fatigue, in-person meetings will be a welcome change. In terms of further managing expectations, my clients also need to understand that we have a strategy that has short-term, medium-term and long-term perspectives. I always like to instill clients with the confidence that there is a Plan A, a Plan B and even a Plan C. Of course, managing expectations is also important. Patent prosecution and litigation can be very unpredictable. Clients need to understand that, sometimes, personal bias or even someone’s breakfast can alter an outcome! We should be prepared with our back-up plans.
As more and more industries are affected by technological convergence, what considerations should Canadian and US patent owners bear in mind when assessing their existing IP strategies?
Owners should get out of their patenting comfort zone. Virtually every company uses software to add value to their business. Unfortunately, many companies are still not exploring the patenting of innovations that are software implemented. Even worse, many of these companies have been misled into believing that their innovations are not patentable and/or are better protected through copyright. An interesting statistic is that software-enabled inventions now account for approximately 70% of the global patent filings.
What do you expect to be the next big tech sectors to take off – and how can companies and investors ready themselves?
I see the quantum computing sector as the next frontier and the clean technology sector remaining at the forefront as governments pour billions into innovation to address the climate crisis. Companies with strong IP strategies that give them freedom to operate will dominate. Investors should be watching out for such companies.
What has been the highlight of your professional career so far and why?
Being called on by the Ontario government over the past few years to advise them on intellectual property and commercialisation policy has been one of the highest honours for me. Our expert panel report led by Jim Balsillie, former CEO of BlackBerry, can be found here: www.ontario.ca/document/report-intellectual-property-in-ontarios-innovation-ecosystem.
My partnership with Art Brion has also been a great highlight. We have had an incredible journey to this point. We both share a love of working with passionate innovators and engaging with cutting-edge technology. Most recently, with Art’s support, I have launched a software company, Fortress.Legal, a SaaS web platform to help innovative SMEs manage intellectual property, contracts and data to grow faster and achieve higher valuations.
Natalie Raffoul has world-renowned expertise in the patenting of software, business methods, AI and machine learning, and in the licensing of software and data. As a patent agent, Ms Raffoul works closely with companies of all sizes to develop and refine IP procurement strategies within the context of a particular company’s business goals and environment. As a lawyer, she provides IP licensing and commercialisationrelated advice and advises on IP enforcement issues in the pre-litigation context.