Sally Yoon is an IPilogue Writer 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.

, organized by the (“CIPO”) and the (“CIGI”), included a session on “Clean Technologies” about the status of Canada’s IP ownership and cleantech sector. The moderators were Joel Blit (professor of economics at the University of Waterloo and senior fellow at CIGI) and Rich Corken (deputy director of economics, research and evidence at ).

Trends and Challenges in Canada’s IP Ownership and a Collective’s Role in Addressing these Challenges

Mike Mclean (chief executive officer of the (“IAC”)), Emma Start (director of intellectual property at ), and Dan Herman (founder of and special advisor on the Establishment of a Centralized Resource Entity on the Intellectual Property) spoke about Canadian small-to-midsize enterprises’ (“SMEs”) role as significant economic drivers. They outlined some of the key challenges SMEs face in participating successfully in the IP ecosystem:

1. Cost and complexity: The cost of acquiring patents and the complexity of the international system deters companies from participating.
2. Lack of focus in IP education on strategy-linked business outcomes and commercial success: There are challenges in applying theoretical IP knowledge to real-life practical situations, which shows a need to provide SMEs with more “granular, case-study-based” education.
3. Limited talent capacity available: There is a limited talent capacity available to help businesses with their IP strategies and limited connectivity to institutions and existing expert players.
4. Limited tools for support: Companies require more support to bridge the gap from starting an IP program to having a self-sufficient IP system and operation. This is also critical for international commercialization.

The IAC is taking a collective approach to tackle these challenges. Their initiatives include building a collective patent portfolio and obtaining IP insurance at cost-effective rates for members, conducting market and patent research to inform strategy development, and providing businesses with IP software tools. Moreover, Intellectual Property Ontario, a board-governed agency set to begin operations later this year, will also work towards addressing the above four issues to help clients access the market.

Clean Technologies’ Economic Impact and Innovation

Nicholas Johnston (junior policy analyst in the Strategy and Innovation Policy Sector at ) and Mazahir Bhagat (data scientist in Business Improvement Services at CIPO) shared statistics on the Canadian cleantech sector and its activity in IP.

Overall, statistics showed that the cleantech sector is steadily growing and well-funded, with nearly all financing requests made by SMEs being approved in 2017. The sector was also active in IP—cleantech firms were most likely to participate in strategic activities related to IP, and enterprises in the sector showed more overall familiarity with IP than the average enterprise. Patent filing trends related to CO2 conversion and hydrogen production showed that Canadian inventions constituted about 1-2 percent, with the U.S., China, and Japan being the leaders. Businesses formed a significant chunk of the institutions filing the patents in Canada and globally, with interestingly high participation from the academic sector.

Patent Analytics on Hydrogen and Low Emission Technologies

Catriona Bruce (head of Patent Analytics Hub at ) looked at the patent filing of low emissions technology and hydrogen. Global patent data from showed that solar photovoltaic cells had the leading number of global patents filed, with most hydrogen patent filings being direct to production and utilization. China was the leading source of invention for both solar photovoltaic cells and inverter and hydrogen patents, as well as a leading target market. Interestingly, patents filed in China mostly stayed within the country; 17264 filings out of about 30000 hydrogen filings were from China, with only 809 from outside of the country. Relatively fewer inventions came from Canada and Australia, indicating further initiative for investment in domestic capability.

IP in Climate Transformative Technology Companies: The SDTC Approach

Amber Batool (vice president and chief of staff at (“SDTC”)) spoke about how SDTC enforces business leadership through mentorship. Its education programs frame advice for companies and address the issue that very few Canadian companies have the mature IP to compete or financial ability to keep up. have been mentors in education programs to frame advice for companies. SDTC’s approach to making an impact includes thought leadership, tailored IP strategies and learning pathways, and IP capacity creation. It plans to continue collaborating with others doing valuable work in this area to meet its clients’ changing IP needs.

Canada has the lowest labour productivity of the G7 and is the only G7 country whose R&D has gone down over the last 20 years. The panel discussions provided valuable insights into Canada's current position within the cleantech sector and the next steps necessary to achieve our national objectives for the environment and economy while maintaining a globally prominent position within the IP ecosystem.

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Claire La Mantia is a Guest Writer and a 2L JD Candidate at Osgoode Hall Law School.

Determining whether an employer or an employee owns the intellectual property of a work produced during the course of employment can be challenging. While an employer may have invested significant resources to facilitate the production of an invention and wish to capitalize on their investment, their employee also likely devoted significant time and energy into developing the invention and may feel entitled to benefit from its associated IP. Although different types of intellectual property protections may apply, including , patents, industrial designs, trademarks, and trade secrets, this article will focus on private and public sector employees’ patent rights to inventions produced during the course of their employment.

Private Sector Employees

The contains no express provisions pertaining to the ownership of inventions produced by an employee during the course of their employment. However, common law jurisprudence indicates that employees are generally presumed to own patent rights in these circumstances. One is where an employee is specifically hired to invent something for the employer, as was determined in In determining whether an employee was , courts may consider eight factors:

1. The employee was hired for the express purpose of inventing.
2. At the time of hiring, the employee previously had made inventions.
3. The employer put incentive plans in place to encourage inventions and product development.
4. The employee's conduct following the creation of the invention suggests that the employer is the owner.
5. The invention is the product of the employee being instructed to solve a specific problem or invent a solution.
6. The employee sought help from the employer or consulted the employer in making the invention.
7. The employee created or developed the invention with the employer's confidential information.
8. It was a term of the employee's employment that they could not use ideas that they developed to their own advantage.

As such, employees intending to patent inventions made during their employment should be aware of the purpose of their employment and the assistance or instruction provided by an employer in developing the invention.

A written contract including an express contractual term contrary to the presumption of employee ownership . Each party would have to approve an express provision granting the employer ownership of any work produced by an employee through their employment in order for the provision to apply, but the provision would provide employers a stronger guarantee of IP protection than relying on the “hired to invent” exception. Private sector employees should read contracts carefully to understand their obligations to their employer and whether the presumption of employee ownership of IP produced during the course of their employment could potentially be refuted.��

Public Sector Employees

In contrast to the private sector’s presumption of employee ownership, a reverse presumption applies to the patent rights of public sector employees. The Public Servants Inventions Act () that any invention produced by a public employee in the scope of their employment duties or made using the facilities or funding provided by or on behalf of the federal government, and inventions connected to or resulting from one’s employment in the public sector, are the property of the federal government. This to any new and useful art, process, machine, manufacture or composition, or any new and useful improvement.��

However, public service employees may obtain the relevant minister’s permission to file a patent for their invention outside of Canada. Public service employees may also file patents for their inventions in Canada by disclosing their status as a public servant on their patent application. Ministers may public servant inventors for their work where the invention in question is determined to be the property of the federal government.

The question of IP ownership in the public sector could unfold in Canada following the firing of a publicly employed scientist at the country’s highest infectious disease laboratory, the Winnipeg-based National Microbiology Lab (NML). A recent article revealed that Dr. Xiangguo Qiu filed patents for two inventions in China, each pertaining to work that she conducted as a civil servant at the NML in Canada. As a public service employee, the PSIA applies to these inventions. The question remains whether Dr. Qiu obtained permission from the applicable minister to patent the inventions in China or violated the PSIA in filing patents outside of Canada.

Generally, it is important for all employees to be aware of their obligations to employers and their right to retain ownership of their inventions produced as part of, or in connection with, their employment. Part of this awareness is an understanding that an employee’s obligations and rights may differ depending on whether they are employed in the private or the public sector.

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Digitalization and globalization continues to impact the way that consumers interact with creative works, as well as the way that content creators interact with each other and the rest of the world. New collaborations with unique intersections between industries have become a necessity for creators to distinguish themselves in a world full of creative opportunities. The music industry has seen this first hand, with various performers, songwriters, and producers [2] working together and reinventing projects that would not have been a reality even just a decade back. Online platforms and digital distribution models have not only made accessing music easier and more cost effective for consumers, but have also increased convenience and efficiency for musicians. With these platforms and distribution models providing a continuous and accessible stream of opportunities for musicians globally, remaining competitive in today’s North American music scene has become increasingly difficult. Now, more than ever, musicians are facing the pressure of bringing something new to the table – something that will provide them with a collaborative, creative, and innovative edge.

A current topic of debate in Canada is whether the Copyright Act’s reversionary right impedes on such innovation and opportunities, especially when considering the highly competitive nature of the Canadian music scene. Through Adams' suggestion to amend the provision from twenty-five years after death, to twenty-five years after assignment, the goal is to balance an author’s rights to those who exploit their work through contract. This altered provision would more closely mirror the United States’ termination right of thirty-five years after assignment. Given Adams’ status and success, varying opinions and concerns have emerged from this proposition. Many Committee members were not shy in recounting their “Summer of ’69” nostalgic memories, leaving those in opposition of Adams’ recommendation wary of whether the issue itself is as significant as the rock’n’roll legend suggests.

Within two days of Adams addressing the Standing Committee, the Globe and Mail classified Adams’ copyright concerns as “charmingly retro.” The publication argued that in today’s Spotify-driven music industry, recording companies exploiting struggling young musicians is a “laughably secondary concern.” [3] However, it is exactly because of these new forms of technology drastically impacting the music industry, that Canada must revisit its existing laws. Though it is true that many issues and concerns have arisen with respect to digital distribution models such as Spotify, without addressing the underlying legal and policy concerns rooted within established legislation, it will remain difficult to effectively and completely address the complementary issues created by alternate modes of distribution. Regardless of Adams’ popularity, the issues surrounding Canada’s reversionary right are current and urgent. It is because of Adams’ social status, however, that many – both within the legislative regime and external to the practice of law or music industry – have noted and realized the long-term significance of the issue at hand.

Due to the global digitalization of the music industry, it is essential to give musicians and artists the opportunity to build upon their original works in order to provide for a collaborative and innovative means to remain competitive. I believe that through modifying the reversionary right within section 14(1) of Canadian Copyright Act in favour of Adams’ proposition, young Canadian musicians will be better positioned to promote and share their works in today’s ever-changing and digitalized music industry. Through giving Canadian musicians more autonomy over their works, Canada’s music industry will have a tremendous ability to benefit, regardless of the continuously changing paradigm and digitalization of the industry.

This article was on

This is a revised abstract of a personal research essay written under the supervision of Professor Saptarishi Bandopadhyay at Osgoode Hall Law School.

Written by Alessia Monastero, JD Candidate at Osgoode Hall Law School.

[1] Briefly, in Canada, a “reversionary right” refers to an author being able to regain ownership of their copyright(s), regardless of the specific assignment period that may be prescribed by contract, twenty-five years after their death.
[2] For the purposes of this article, “songwriters” refers to individuals who write compositions and songs, “performers” refers to those who play and perform the composition, and “producers” include those who produce sound recordings. An individual may be one or all of the abovementioned parties at the same time.
[3] Kate Taylor, “Bryan Adams’ Copyright Concerns are Charmingly Retro” (20 September 2018), online: .

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How courts deal with the concept of authorship is an area to watch as artificial intelligence (AI) becomes more creative and humanlike, noted panellists at Bracing for Impact: The Artificial Intelligence Challenge Part II conference series hosted by IP Osgoode.

Lawyers and academics pointed to examples of creative works made by humans, machines and even a monkey during the conference’s��,��Intellectual Property at a Crossroads, as they discussed the impact AI would have on patent and copyright laws.

Shlomit Yanisky-Ravid, a faculty member at Ono Academic College in Israel, and Fordham Law School in New 91��ɫ City, kicked off the March 21 discussion by playing clips of music, asking which score was created by a human or AI. It was anyone’s guess as the music sounded eerily similar. She deployed the same test while displaying paintings, asking the conference to tell her which works of art were made by human hands.

“It’s very difficult to distinguish between an AI system and human,” she said, pointing to the humanlike capabilities of AI.

“AI systems can be creative, autonomous, unpredictable, rational,” she explained. “That’s why I think it has free choice. It can communicate with the Internet and get data even without the engineer knowing that this happened.”

Yanisky-Ravid questioned whether an AI system should own its creations, adding that giving ownership of the work to the AI’s programmer would be like saying whoever invented the camera should be the owner of a photo.

“My suggestion is taking the ‘AI for hire’ doctrine and seeing the AI system as an agent,” she added, noting that this way of thinking better reflects the understanding that AI is creative.

Dave Green, assistant general counsel of IP law and policy at Microsoft, said AI, in some instances, can create useful and expressive work equivalent to that produced by humans, which is why, from a policy perspective, he asked what behaviours copyright law is trying to incentivize.

“The challenge with existing copyright law, obviously now, is it’s really developed around this concept of personhood. In the United States��Copyright Act��and the (U.S.) Constitution, it’s very clear that there’s a requirement that a work be produced by humans. And I guess the question that I’d ask is, does it matter? And why does it matter?” he said.

From a policy perspective, Green suggested, that the fundamental question should be, “do we want to insist upon the requirement of humans and personhood?” If the answer is no, then how will that impact data stream issues typically associated with copyright, infringement, reproduction and liability?

Green noted producing a creative work involves a lot of steps, not all of which are protected by copyright. However, when they are protected, the law requires a human to be associated with that contribution to the work.

“When you’re dealing with artificial intelligence it’s not simply about a creative contributions and to the extent that copyright law is incapable of contributing protection for those expressive elements; there’s always patent law that can potentially step in,” he said, noting that a lack of novelty may be a challenge in obtaining patent protection.

“The challenge from an ownership perspective is a lot of these processes take place, and are increasingly taking place, in cloud environments. And so, there’s a huge amount of difficulty in detecting that infringement and being able to then understand, and apply, and do the analysis necessary to determine whether or not there’s been patent infringement,” he added.

Jurisdictions around the world will have different perspectives in applying patent law, Green said, so there will be “a set of fundamental questions about whether the law today is fully equipped to protect, not just the aspects, but the output that AI delivers.”

AI is “exploding,” Green stressed, noting that it remains to be seen “whether and how” courts can grapple with a concept of authorship.

“There’s a number of cases out there, currently existing in copyright law that go back 15 years, that look at factual components and recognize copyright ability because of the selection, and arrangement, and the judgment that was applied in determining that particular output and have given it a minimal level of copyright ability. Certainly, from a patent protection [perspective], there [are] certain limitations. That doesn’t appear to have slowed down the patent activity,” he said, adding that in the future we will have to consider how to shape the expansion of intellectual property to protect AI’s output.

“I think from our perspective; intellectual property is doing quite well. It’s furthering the policy initiatives it set out to do. It’s certainly not slowing down, and I think the amount of activity, and the growth of activity, suggests that at least for the time being we’re in good hands with our current intellectual property statutes and provisions,” he concluded.

Catherine Lacavera, director of intellectual property, litigation and employment at Google Inc., said that while she thinks AI is at a crossroads, IP is not. She noted the more interesting challenges with AI lie on the regulatory and social impact side of the discussion.

“I think that everything that applies to software patents, equally applies to AI. So to the extent that there are things that need to be worked through on tightening up the patent system for software patents, I equally think that applies to the AI space,” she explained, adding that the need for data combined with privacy protection concerns is a challenge in innovation.

“There’s this sort of grappling struggle between enabling innovation versus all the privacy challenges and potential abuses of the technology. I think along those lines, and in a regulatory mindset, [are] where the bigger challenges are,” she said, noting that Google has released a set of����to help protect against abusive technologies.

Lacavera said that according to the Google principles, AI needs to be socially beneficial.

“You don’t want to be overly restrictive in how people use open source AI technology, but on the other hand, we have committed to not allowing use in certain areas, like weapons development or surveillance, these kinds of things where you can see where really powerful AI can become concerning,” she explained.

Maya Medeiros, a partner at Norton Rose Fulbright LLP, stressed the importance of collaboration in AI development and how IP can help facilitate that.

“Collaboration in development can help maintain leadership positions for AI innovation,” she said, noting that this helps avoid people having to start from scratch as it connects silos in technology, data and knowledge.

To remain competitive globally, Medeiros explained, collaboration is key.

“How can IP rights facilitate these multiparty collaborations? To protect AI innovation, how can the law incentive collaborative behaviour?” she asked, noting that protecting the freedom to operate transformative technology can provide the answer.

“I think the importance of IP rights and the freedom to operate come together in order to provide these more defensive assets for the law to prevent others from claiming exclusive rights,” she said, suggesting a “freedom to operate licensing” to encourage collaboration.

Written by Amanda Jerome, Digital Reporter, The Lawyer's Daily.

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