Egin Kongoli is a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s IP Innovation Program.

Canada is getting serious about consumer privacy, or so our lawmakers claim.

Parliament has recognized the public’s need for a data framework that ensures proper transparency and accountability.[i] Ottawa’s response is and the proposed Consumer Privacy Protection Act��(CPPA), meant to govern the future collection, use, and disclosure of personal information for commercial purposes. However, while the law modernizes elements of the privacy framework, it leaves out exceptions for de-identified data practices that undermine the very trust the legislation is meant to foster. Standing tenuously on technological assumptions, the exception creates a wild-west scenario ripe for harmful data practices.��

Under the CPPA, organizations are not required to obtain user consent to de-identify, a process that modifies data so that “an individual cannot be directly identified.”[ii] The legislation creates an offence for re-identification and, as such, seems aware of the risk.[iii] Nonetheless, further exceptions are made for data anonymization, by which an organization “irreversibly and permanently modif[ies] personal information… to ensure that no individual can be identified from the information, whether directly or indirectly, by any means.”[iv] The CPPA excludes the anonymized data from its purview because, by their definition, there is no reasonable prospect of re-identification.

This logic rests on several problematic assumptions. First, the line which separates de-identified and anonymized data is vague and rarely obvious until re-identification occurs. De-identified data is by its nature not meant to be re-identified, and thus anonymous by the government’s definition. Moreover, the law assumes organizations have the technological capabilities to ensure irreversible and permanent anonymization. While identifiers may be removed, many other seemingly innocuous data points can be used to . Research from Oxford recently found that . One might imagine many disturbing consequences, from identity fraud to the cancer patient whose allegedly-anonymous data is used to change their insurance coverage and rates.

How can the disclosure and use of data be monitored if the law excludes anonymized data from regulation? Privacy enforcement may require individuals to come forward with complaints about the misuse of their data.[v] The system thus asks users to not only be aware of their data anonymization (which they never consented to) and its subsequent disclosure (kept secret from them) but to catch the bad actors re-identifying information the regulators turned a blind eye to. Our framework’s release-and-forget de-identification model thus opens the door to potential misuse of personal information that will remain altogether hidden from the regulator’s or public’s view. Where is the transparency or accountability?

While the anonymized exception answers the growing demands of businesses seeking to use personal data, the current state of de-identification practices does not satisfy the standards of the CPPA. The European GDPR includes data that does not contain direct identifiers but is capable of re-identification, “,” as within the scope of the law. That our lawmakers decided against regulating allegedly-anonymous data begs whether their priorities indeed lay with the needs of the public or of commerce.

[i] Bill C-27,��An Act to enact the Consumer Privacy Protection Act, the Personal Information and Data Protection Tribunal Act and the Artificial Intelligence and Data Act and to make consequential and related amendments to other Acts,��1st Sess, 44th Parl, 2022, preamble, para 8.

[ii] Ibid at s 2(1).

[iii] Ibid at s 128.

[iv] Ibid at s 2(1).

[v] Ibid at s 107.

The post Anonymous for Now: Demystifying Data De-Identification appeared first on IPOsgoode.

Emily Xiang is an IPilogue Writer and a 3L JD Candidate at Osgoode Hall Law School.

Huge changes have come to the Canadian Copyright Act. In late November of 2022, an was signed to fix December 30, 2022 as the date on which Division 16 of Part 5 of the Copyright Act came into force. The amendments come by way of legislation passed back in June 2022  to increase the term of copyright protection from 50 years to 70 years following the end of the calendar year of the author’s death.

The new changes are in line with �䲹�Բ��岹’s treaty obligations under the , which came into force on July 1st, 2020. Under CUSMA, the country made a commitment to extend its general term of copyright protection from 50 years to 70 years following the life of the author, with a transition period lasting until the end of 2022 to implement the changes. The extension brings Canada , including with many of its major trading partners, such as the United States, the United Kingdom, and the European Union. This extension will hopefully generate new opportunities for investment and commerce for �䲹�Բ��岹’s creative industries.

Following CUSMA, the Government of Canada commenced in early 2021 on the implications of the proposed copyright term extension. The consultations were met with mixed reactions. Many believed that the extended term of protection would provide rights holders with , thereby incentivizing creative production. On the other hand, the proposed amendments also garnered significant pushback, particularly from user-oriented groups, as the extended term would mean further restriction on public access. An overview of the differing views from the perspective of the educational publishing industry in particular can be found in .��

Following the public consultations, Prime Minister Justin Trudeau also addressed mandate letters to the Ministers of and of , requesting that the departments work together to amend the Copyright Act in order to further protect artists, creators, and copyright holders. A commitment to making the legislative changes was also included in the .

With the changes to the Copyright Act coming into effect, there is more clarity as to what works might be encompassed by the new amendments. According to , the extended term of protection will not apply to works that already entered the public domain before the amendments come into force. Works with copyright set to expire on or before December 30, 2022 will not be privy to the extended protection term. In other words, the extension will not operate retroactively. On the other hand, copyright in a work that is set to expire on or after December 31, 2022 should benefit from an additional 20 years of protection.��

The post Government of Canada Has Officially Extended Copyright Terms appeared first on IPOsgoode.

Emily Chow is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

The reported on August 7, 2022 that Innovation Minister Francois-Philippe Champagne and Heritage Minister Pablo Rodriguez are working on reforming the to include an artist resale right (ARR) within the scope of the act’s protections. First enacted in France in 1920, ARRs have now been adopted by in the world, including India, the United Kingdom, the Philippines and Australia. To understand why ARRs may come into force, it is important to assess the various arguments in support of and against this legislation.

ARRs formed part of the Liberal Party’s in 2021, but have been central to artist rights advocacy for according to – the Canadian Artists Representation / Le Front des artistes canadiens – a non-profit organization of professional visual artists. Under current Canadian law, artists such as sculptors and painters receive no profits from their works’ resale. One commonly cited example is the late Inuit artist Kenojuak Ashevak’s print titled . Hailing from Kinnigait (formerly Cape Dorset), Nunavut, Ashevak originally sold her print for in 1960. In November of 2018, a limited-edition Enchanted Owl print sold for $216,000 at Waddington's Auctioneers and Appraisals Toronto: nine thousand times the original price and breaking the record for the most expensive Canadian artist print ever sold via auction.

If ARRs existed in Canada, Ashevak’s estate would have received $10,800 for the sale of Enchanted Owl. CARFAC has been advocating for to be granted to the original artist or their estate, pointing to the fact that half of �䲹�Բ��岹’s visual artists earn less than $18,000 per year. In its , CARFAC also highlighted the reality that many artists living in isolated northern communities live in impoverished conditions, while their work dramatically appreciates in value. In , Rankin Inlet-based artist Theresie Tungilik noted that “[the] artist's resale right will have a positive financial impact as 10% of �䲹�Բ��岹’s export is Inuit art.”

The rise of NFTs and blockchain technology – despite providing an – has also provided opportunities for artists to be compensated for the appreciation of their works. The embedding of “smart contracts” in NFT sales allows for the Exercising control of downstream purchaser actions for traditional or non-digital artistic mediums is more complicated. Outside of , which protect the original artist’s right to be associated with the work without modification or destruction, agreements of purchase and sale generally enable the purchaser to do whatever they see fit with the work.

While organizations like CARFAC, (Society for Composers, Authors and Music Publishers of Canada) and (Regroupement des artistes en arts visuels du Québec) are staunch supporters of the artist resale right in Canada, other groups remain hesitant. Both the Contemporary Art Galleries Association (AGAC) and Art Dealers Association of Canada (ADAC) are , arguing that ARR collections would be a bureaucratic burden for small galleries, as well as raise the price of art and reduce sales. Interestingly, a study done in the UK by WIPO entitled “” demonstrated that the resale right had no negative impact of the price of artworks or the competitiveness of markets. The study also found that the market continued to grow after the implementation of the resale right in 2006.

Not all Canadian galleries oppose ARRs. Jay Isaac, an artist himself who runs the Peter Estey Fine Art auction house in New Brunswick, has to . Isaac told Canadian Art that “as a small, artist-run business I have to say the idea of a policy is great, and the idea of a resale right becoming law is great—but sometimes I think that [lack of law] is used as an excuse not to move forward. People with money and power should really be doing this anyway.” Although no specific amendments have been presented yet, it will be interesting to see how the conversation regarding ARRs continues to develop in Canada. Most importantly, ARR discussions provide an opportunity to consider how to best support our diverse artists and creatives.

Further Reading:

Michelle Mao’s IPilogue on ARRs and NFT loopholes

�����䴡��’s to the Standing Committee on Industry, Science and Technology as part of the statutory review of the Copyright Act

WIPO Magazine, “” by Catherine Jewell

Inuit Art Foundation’s

The post Canadian Perspectives on Artist Resale Rights appeared first on IPOsgoode.

Michelle Mao is an incoming 2L student at Osgoode Hall Law School and an IPilogue writer.

The IP principle that abstract ideas cannot be patented has often been misapplied to the development of software, often boiling down to concluding software to be unpatentable. However, which parts of software are patentable, and which parts are not? The short answer is that while lines of code are not patentable, software can be patentable if it is useful and can be susceptible to commercialization.

�䲹�Բ��岹’s and the (“MOPOP”) both  guide the (“CIPO”) in issuing patents. Applicants must meet certain requirements for a software patent to be issued. . First, several of patentability must be met, including novelty, non-obviousness, and being of a patentable subject matter. Second, additional criteria often apply to software-related inventions, including needing to have a on the real world or needing to be operated through a , such as a computer.

The above criteria are rooted deeply in the principles of IP law, specifically that abstract ideas, functions, scientific principles, or abstract theorems cannot be patented – as codified in . Those criteria protect the objective of IP law, which is to compensate inventors for innovative ideas while preventing barriers from being created as a result of patenting ideas and basic building blocks that are essential to innovation.

Given all these requirements, it is not hard to see how the misconception that software is not patentable arose – with software seeming like an intangible collection of code performing certain functions. However, with the immediate and ever-increasing utility of computer-based applications, new software patent applications very often meet the criteria of usefulness and novelty, allowing most software patents to be eligible.

Interestingly, a large tech company in 2011 almost failed to adequately define its software patent application. In , Amazon tried to patent a “one-click” shopping feature to increase the speed at which a purchase can be completed. The case was positioned uniquely in the intersection of increasing utility, which fulfills a patent requirement, and an abstract idea, a business method. Originally, the Commissioner had rejected the patent for several reasons, one of which was the unpatentability of an abstract idea. The Federal Court of Appeal, however, found that business methods may be essential to a utility and the mere characteristic of a patent application to be part of a business method does not make it ineligible for patent.

Commercializing new developments in software has been an important concern as the tech sector continues to . Courts have treated the delicate balance between business methods, the features and functions of code, novelty, and protecting innovation carefully for the past several decades.

As of now, the courts have created enough case law to provide a stable guideline for CIPO in software patent applications. It is interesting, however, that statutory provisions dealing specifically with software patents have not been integrated into the Patent Act. Only time will tell whether this allows for flexibility as the tech sector continues to develop or causes continued confusion and debate.

The post How and When can Software be Patented? How IP law principles interact with emerging tech appeared first on IPOsgoode.

Aaron Dishy is an IPilogue Writer and a 3L JD Candidate at Osgoode Hall Law School.

The proposed Artificial Intelligence and Data Act (AIDA) would introduce greater regulation of the use and development of artificial intelligence (AI) in �䲹�Բ��岹’s private sector. On June 15^th, 2022, the Minister of Innovation, Science and Industry, François-Phillippe Champagne introduced Bill C-27, or the . Bill C-27 reiterates much of , tabled in 2020, reintroducing a modified Consumer Privacy Protection Act (CPPA) and Personal Information and Data Protection Tribunal Act (PIDPTA). However, Bill C-27 also introduced newly proposed legislation like AIDA which, if enacted, would make long advocated-for changes to �䲹�Բ��岹’s AI regulatory landscape.

AIDA would create new assessment and risk-mitigation tools for the use and transparency of high-impact AI systems. It would establish persons responsible for monitoring AI systems, such as the Artificial Intelligence and Data Commissioner — their role is to assist the Minister in the administration and enforcement of AIDA. Monetary penalties for the AIDA contraventions are also set out to enforce trust and deter the reckless and fraudulent uses of AI. In this way, Bill C-27 and AIDA would direct Canada towards harmonization with international regulatory frameworks, like that of the .

With that being said, AIDA would be more limited in scope when compared to its EU counterpart. For example, unlike EU legislation, AIDA would not apply to both public and private sectors, and all federal government institutions would be exempt.^[1] Further, EU legislation sets out specific prohibited AI practices, alongside criteria for determining the degree of risk presented by any AI system. AIDA establishes no specific prohibited AI practices and distinguishes only between high-risk AI and all other systems; complex and salient matters are left to incoming regulation.

Beyond its limited scope, AIDA may be uncertain in its delineation of provincial and federal responsibilities. For example, AIDA’s consideration of “regulated activity,” would capture many elements of AI development and use, including “designing, developing or making available for use an artificial intelligence system or managing its operations.”^[2] This language indicates the legislation is pursuant to Parliament's trade and commerce power under section of the Constitution Act, 1867. However, the federal government may also intend provinces to legislate on intraprovincial uses of AI, notwithstanding the rarity of circumstances under which such AI systems would be developed.

Lastly, attention is required of the breadth of persons AIDA considers “responsible” for an AI system in the course of trade.^[3] It holds designers, developers and managers of AI systems subject to AIDA’s administrative and operational requirements. If those parties are expected to monitor or conduct audits of consumer deployment of AI systems, assessments must be made of risk potentials and mitigation from both perspectives. Additional regulation may be required in the full consideration of such perspectives.�� 

AIDA remains proposed legislation and may be modified prior to implementation. However, it represents a much larger move by international legal bodies to regulate the development and use of AI. Businesses must be prepared for greater AI regulation in Canada. Thankfully, informative and responsive policy for the consideration of AI systems is also being developed, such as a by the Law Commission of Ontario. If correctly applied, AIDA should empower more Canadians to engage with trustworthy and transparent AI systems.

^[1] This may be extended to exclude provincial departments or agencies by regulation as set out in s.3 of AIDA.

^[2] See s.5(1) of AIDA.

^[3] Ibid at s.5(2).

The post Artificial Intelligence and Data Act (AIDA) signals more AI regulation to come appeared first on IPOsgoode.

M. Imtiaz Karamat is an IP Osgoode Alumnus and Associate Lawyer at Deeth Williams Wall LLP. This article was originally posted on  on June 29, 2022.

On June 14, 2022, the Government of Canada introduced ,��An Act Respecting Cyber Security, which would enact the Critical Cyber Systems Protection Act (the CCSPA) to establish a regulatory cyber security framework and improve baseline security for vital public systems and services.

The CCSPA will apply to certain classes of federally regulated entities (Designated Operators) that are involved in four priority sectors: finance, energy, telecommunications, and transport. It is proposed to address outstanding gaps in the current regulatory environment by allowing the Government to (i) designate critical Canadian services and systems and the parties responsible for their protection; (ii) ensure regulated parties are adequately protecting cyber systems and compel action in response to cyber threats; (iii) mandate the reporting of select cyber incidents; and (iv) ensure a cross-sectoral approach to cyber security.

To accomplish the Government’s goals, the CCSPA will impose new compliance and reporting duties on Designated Operators which, among other things, require them to:

• establish a cyber security program that documents the protection plan for a critical cyber system;
• mitigate supply chain and third-party service or product risks;
• report cyber security incidents to regulators; and
• keep compliance records.

The CCSPA provides the Governor in Council with enforcement powers to issue Cyber Security Directions (CSDs) that require Designated Operators to take certain suggested actions regarding the protection of a critical cyber system.  CSDs may be accompanied by specific deadlines and failure to comply may lead to administrative monetary penalties or regulatory offences resulting in fines or imprisonment.

The post Government Of Canada Introduces Bill C-26 That Proposes To Enact The Critical Cyber Systems Protection Act appeared first on IPOsgoode.

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

On , the Delhi High Court protected the title of the iconic Bollywood movie “Sholay” from trademark infringement and passing-off by a U.S. based company, as well as its Indian affiliates and founders.

The lawsuit was filed in 2001 when the defendants were found to have registered the domain name ‘www.sholay.com’ for its website. Additionally, the defendants were also found to be publishing a magazine with the same name and offering for sale various merchandise using content from the movie, including its title, in the same logo script. Through its website, the defendants were found to be offering various electronic services, such as web-chat, e-greetings, horoscopes, classifieds, and Bollywood news.

About “Sholay”

The iconic film “Sholay” was released in India in 1975 and became the biggest record-breaking film in the history of Indian cinema. The movie ran in fully packed theatres until 5 years after its release and made history on numerous occasions., The High Court of Delhi has previously the widespread popularity of Sholay and rights in its’ title and content.

Defences raised

The defendants did not deny their use of the impugned marks. The defendants however contended, in their written response, that:

1. Film titles are not entitled to IP protection;
2. There is no probability of confusion between the defendants’ business and the plaintiffs’ movie;
3. “Sholay” is a dictionary word (translation: embers)

These defences were considered by the court separately. Regarding confusion, the court held that the internet has created an additional market for “Sholay”. The popularity of the film, along with its widespread availability on the internet, would lead individuals to consider the defendants’ goods and services to be “off-shoots” from the film. The court also held that since the defendants’ website is popular within the Indian community in the U.S., the final demographic of the website is yet unclear. This, in addition to the use of an identical logo and marks by the defendant, creates a “”.

 Can movie titles be protected as trademarks in India?

It is settled law in India (and Canada) that titles of movies, books, songs etc. are not eligible for copyright protection. However, Indian courts have trademark protection to from passing off where:

1. The title has acquired a secondary meaning; and
2. There is likelihood of confusion of source, affiliation, sponsorship or connection of potential buyers/audience/viewers.

Accordingly, the court that Sholay has acquired such a reputation over the past (almost) 50 years that the word Sholay connotes only that film and none other.

In accordance with the above findings, the High Court imposed an injunction restraining the defendants from using the mark Sholay and any images from the film for its business.

What about Canada?

As stated above, Canadian copyright law also does not  protect titles of works. However, unlike India, Canadian courts also trademark protection to titles. The Federal Court of Canada last addressed this issue in where protection of a book title as a trademark was refused.

Canadian courts have not addressed this issue in the past decade. It will be interesting to see if the Courts’ stance has changed, given the increasing prevalence of the internet and streaming of content, and sale of artwork etc. in recent years.

The post Rights in Titles: Delhi High Court Affirms Rights in the Title of Iconic Bollywood Film appeared first on IPOsgoode.

M. Imtiaz Karamat is an IP Osgoode Alumnus and Associate Lawyer at Deeth Williams Wall LLP. This article was originally posted on  on June 1, 2022.

On May 16, 2022, the Office of the Privacy Commissioner of Canada (the OPC) released an Interpretation  on sensitive information (the Bulletin), which summarizes general principles from judicial decisions and the OPC’s findings to date to guide organizations in meeting their compliance requirements under the Personal Information Protection and Electronic Documents Act (PIPEDA).

An organization’s practices under PIPEDA may be heavily influenced by the sensitivity of the information that it handles. For example, PIPEDA requires the form of consent used in an organization’s collection process to account for the sensitivity of the information being collected. The sensitivity of an organization’s information is also a relevant factor when determining the adequacy of its security safeguards and fulfillment of security breach obligations.

While PIPEDA allows for any personal information to be deemed sensitive depending on the context, the Bulletin describes the following factors as relevant when examining the sensitivity of personal information:

1. Combined Information. In combining data elements (e.g. customer names, contact details, etc.), organizations may add a degree of sensitivity to the information that is further increased in certain risk situations, such as scams and data breaches. Accordingly, organizations should implement safeguards that meet these higher risks when dealing with combinations of data.
2. Health Information. The OPC mentions that medical and biometric information is usually considered sensitive and should be awarded a high degree of protection. However, there still exists some variation on the degree of sensitivity for certain types of personal health information. For example, an individual’s attendance for a fitness class may be on the lower end of the scale of sensitivity, but their activities in the class may be deemed more sensitive.
3. Financial Information. In referencing past court decisions on the matter, the OPC describes financial information as sensitive and relating to an individual’s “biographical core”. The OPC further advises that relevant weight should be afforded to the context of the situation as this may affect the degree of sensitivity attributed to the information. For example, the current balance of an individual’s mortgage should be assessed against related information that is already publicly available, the purpose of making such types of information public, and the relationships of the parties involved.
4. Reputation Information.��Information that can impact an individual’s reputation and cause embarrassment may be highly sensitive under PIPEDA. Unlike with health and financial data, reputation information is not restricted to traditional information categories and may include financial personal information, information pertaining to an individual’s relationship status, and even court or tribunal decisions.
5. Other Information Generally Considered Sensitive.��In addition to the above categories, the OPC mentions that information concerning individuals’ drug and alcohol use, mental health, ethnicity, political affiliations, and sexual preferences are generally considered very sensitive personal information.

Although the Bulletin does not provide a binding legal interpretation on what is sensitive information, the OPC’s breakdown of relevant considerations and references to specific case law and investigations is very helpful for organizations reviewing their information handling practices.

The post The Privacy Commissioner Of Canada Releases Interpretation Bulletin On Sensitive Personal Information appeared first on IPOsgoode.

M. Imtiaz Karamat is an IP Osgoode Alumnus and Associate Lawyer at Deeth Williams Wall LLP. This article was originally posted on  on May 18, 2022.

On May 2, 2022, �䲹�Բ��岹’s privacy regulatory authorities (the Regulators) issued a  calling for a legal framework that clearly establishes the acceptable circumstances for police to use facial recognition technology (FR).

Police agencies greatly benefit from FR, because it is a useful resource for solving crimes, locating missing persons, and supporting national security objectives. However, the Regulators noted that FR involves the collection and processing of highly sensitive biometric information, which raises a series of privacy and human rights concerns when it is applied on a large scale. Widespread adoption of the technology would enable police agencies to covertly identify and surveil individuals and this may impair Canadians’ privacy right to participate in the world without being regularly identified, tracked, and monitored.

The Regulators called for Canadian legislators to implement a legal framework that outlines the boundaries associated with FR. Although �䲹�Բ��岹’s current principle-based privacy laws are adaptable to evolving technologies, the Regulators took the position that they are too high-level to address the specific risks associated with police use of FR. They argued that the current legal framework leaves much discretion to police agencies, which creates the possibility for serious harms to an individual’s privacy and other fundamental rights.��

In the joint statement, the Regulators suggested that a new legal framework should be implemented by legislators that includes the following:

• Defined Purpose and Prohibited Uses: A clearly defined purpose for police agencies to use FR and a list of prohibited uses, i.e. “no-go zones”.
• Necessity and Proportionality: Overarching requirements for the use of FR to be necessary and proportionate for a given objective.
• Independent Oversight: Empowering an independent, external public body to oversee police use of FR, including requirements for police agencies to obtain authorization to launch an initiative.
• Mitigate Privacy Risks: Privacy control measures that mitigate individuals’ risks, including controls to ensure the accuracy of information and appropriately limit data retention for police databanks.

Together with their joint statement, the Regulators released the final version of their joint privacy  on FR use by police agencies that clarifies the agencies’ obligations under current laws. The guidance and joint statement are the product of a public consultation launched in June 2021, in which a large majority of stakeholders agreed that new legislation is required to govern police use of FR going forward.

The post �䲹�Բ��岹’s Privacy Regulators Call For New Legal Framework To Govern Police Use Of Facial Recognition Technology appeared first on IPOsgoode.

Emily Xiang is an IPilogue Writer, the President of the Intellectual Property Society of Osgoode, and a 2L JD candidate at Osgoode Hall Law School.

This article is part of a series covering the 5th Annual IP Data & Research Conference, hosted by the Canadian Intellectual Property Office and the Centre for International Governance Innovation.

On Thursday, March 24th, 2022, the Canadian Intellectual Property Office (CIPO) and the Centre for International Governance Innovation (CIGI) hosted their 5th Annual IP Data & Research Conference. For their third themed session, “IP Metrics”, experts were invited to speak about the ways they have been observing global IP trends, making IP data more accessible, and measuring the impact of IP on economic growth in Canada.

Where do Canadians Patent? Implications for �䲹�Բ��岹’s Patent Regime

Joel Blit, Professor of Economics at the University of Waterloo and CIGI Senior Fellow, kicked off the session. Blit examined the countries in which Canadian investors filed patent applications and sought to determine the extent to which the Canadian patent regime fosters domestic innovation. He found that Canadians were increasingly filing patents abroad, with more Canadians filing in at least one other country each year. Results also showed that patents filed exclusively in the US related to more advanced fields of computer sciences and technologies, while Canada-exclusive patents focused more on special-purpose machinery and the resources and energy sectors. Canadian patents also tended to belong to individual inventors rather than larger assignees, involved fewer inventors, and were cited less frequently, making them relatively less valuable in the global market for innovation.

Blit puts forward several potential explanations. One is that the Canadian patent system is providing less incentive over time for protecting domestic innovations. Another explanation is that Canadian patents are too strong, meaning it may be preferable to “weaken” them by setting higher examination standards, limiting patentable subject matter, or reducing the scope of issuable patents. That Canadians are increasingly patenting abroad could mean that Canadian inventors are becoming increasingly sophisticated, yet it could also mean that Canadian innovations and ideas are more frequently bought up by multinationals. Either way, the current Canadian patents regime seems to play a relatively minor role in promoting domestic innovation worldwide.

Identifying Artificial Intelligence (AI) Invention: A Novel AI Patent Dataset

Nicholas A. Pairolero, Economist in the Office of the Chief Economist at the United States Patent and Trademark Office (USPTO). delivered the second presentation of the session. Pairolero’s team sought to make data on AI more accessible to the public by developing a novel dataset that identified AI tech components in over 13.2 million USPTO patents and pre-grant publications.

After first determining a definition of AI, Pairolero and his team searched through USPTO’s patents using an automated machine learning (ML) model that differentiated between patent documents that did and did not contain any AI component technology. In the evaluation stage, expert AI examiners evaluated each document for AI component technology. Compared to more traditional, query-based approaches, the ML approach resulted in relatively lower precision (as a much larger number of documents were identified as containing AI), but a much higher recall (higher probability of correctly identifying AI). Moreover, both machines and humans seemed to struggle with classification at the boundaries of the various AI component technologies. However, results indicated that the ML approach achieved state-of-the-art overall performance relative to a variety of existing benchmarks from academic and policy literature, holding much promise for the future of automated processing in expediting the transmission of publicly available data.

Missions, Mandates and Metrics: What are the Right Metrics for Academic Technology Transfer?

The session concluded with a pair of presentations by Mike Szarka, Director of Research Partnerships at the University of Waterloo, and Natalie Raffoul, IP Lawyer and Managing Partner at Brion Raffoul LLP. Szarka began by suggesting that most Technology Transfer Offices (TTOs) focused on some combination of a) maximizing gross revenue and licensing income generally; b) focusing on the few projects that would maximize profits; c) maximizing knowledge mobilization and research impact; d) maximizing local economic growth, and e) maximizing client satisfaction and prioritizing the needs of faculty and students. Szarka’s surveying of TTO directors across the country demonstrated that knowledge mobilization, economic development, and service to academic communities ranked much higher in the minds of the respondents than revenue generation, indicating that commonplace TTO metrics focused on royalties do not reflect the true priorities and missions of most TTOs.

Raffoul identified several alternative metrics focused on “the betterment of Canadian society”. Average reported business expenditures invested into research and development () and have been low in Canada compared to the global stage. The greater concern is whether Canadians are owning their ideas and subsequently having the opportunity to commercialize those ideas downstream (instead of assigning their rights over to foreign firms). Raffoul suggested that TTOs ought to track the number of patents they are licensing/optioning/transferring to Canadian headquartered firms compared to foreign ones, along with the revenue generated from those licenses/options/transfers and any research collaborations with those firms. For company-sponsored academic research, co-ownership of patents ought to be held up to co-authorship of papers and publications, in order to correlate evidence of knowledge creation with the ultimate ownership and control of that knowledge.

Conclusion

Though there is much work to be done for Canadian innovators and owners to remain competitive in the global market, the most recent advancements in research and technology prove that Canada is well-positioned to identify shortcomings and well-equipped to tackle them.

The post IP Metrics: Notes on the 5th Annual IP Data & Research Conference appeared first on IPOsgoode.