Natalie Raffoul

What impact is AI having on the Canadian patent system, especially when it comes to established legal concepts and patentability?

Recent Canadian case law around patentable subject matter involving computer-implemented inventions (CIIs) - including inventions in AI/machine learning – has provided more clarity on the matter. In 2020, in the Choueifaty decision, the Canadian Federal Court rejected the problem-solution approach adopted by the Canadian Intellectual Property Office (CIPO) for assessing patentable subject matter. Instead, an earlier Canadian Federal Court of Appeal decision (Amazon) was upheld. This said that a claimed invention must first be construed to determine its essential elements. After this, the question becomes whether those elements, taken in combination, have a physical existence or a discernible physical effect or change. If the physical existence or effect or change exists, then the physicality requirement is met and patentable subject matter exists. Today, Canada is a more favourable jurisdiction in which to patent CIIs and should be considered when formulating a robust foreign filing strategy for them. Relatedly, CIPO recently published a report on patenting AI in Canada. In the report, it notes that “establishing a universally accepted definition of AI from a patent perspective is a challenging feat”. I agree and, as we see more breakthrough technologies in AI, the legal framework for patentability will evolve.

How has your management style evolved over your career – particularly over the last year of remote working?

During this pandemic, as the managing partner, I sought to keep everyone safe while maintaining an effective team dynamic. When necessary, we moved seamlessly to working from home. However, outside of the various waves, most of our team primarily worked in the office. Because social interaction between co-workers is critically important to fostering a great work culture, the physical office is not dead. Those ‘water cooler’ moments cannot happen when we are all working from home. While it is good to embrace video conference technology, there is no substitute for in-person engagement. As such, our management team has been working hard to ensure that we have a safe environment for everyone at the office.

Can you name some of the biggest challenges facing your clients at present?

For many of our hardware clients, supply shortages (especially for chips) have been challenging. In addition, many of our

clients are facing a pandemic burnout among their staff, and there have been unprecedented turnovers. Because talent is everywhere now and more mobile than ever, it has been challenging for Canadian companies to try to recruit the best. That being said, there are opportunities to look outside our borders for talent, and that is exciting.

What advice would you give to someone considering a career in IP law?

I would recommend gaining some corporate in-house experience at some point, ideally, early on in your career. Too many IP attorneys fail to understand their clients’ business challenges. Clients need advice on their legal risks but that advice has to fit within the context of their overall business strategy/risk. Helping clients to assess legal risk, and their business risk, is a critically important skill for IP attorneys.

What three changes would you like to see in the Canadian tech space – and how likely do you think they are to happen?

1. Canada has a very large research and development tax credit programme for Canadian tech start-ups and SMEs. However, this does not provide credits for commercialisation activities, such as procuring IP rights or licensing/marketing. In theory, a Canadian company that never commercialises its research into a product or service would receive the same amount of tax credits as a company whose research produces a product or service. Unfortunately, the lack of tax credits for IP costs for our SMEs has left too many companies exposed because they are not patenting at rates in-line with their R&D activity. Political leaders in Canada are now heeding this call for change and we are hopeful such tax credit programmes will evolve to address IP costs.
2. More women. We continue to talk about women in tech but the number of women, particularly in management, remains low. The time for quotas has come because, even after 25 years since I started out in electrical engineering, not much has changed.
3. Canada has an opportunity to be an IP leader in quantum computing. Hopefully, we can start to see more Canadian patenting activity in this area that is commensurate with the level of Canadian research and investment in quantum computing.