30th April, 2019
CET Group 6 is the “reborn” work and study group dedicated to software, high-tech, and computer related issues. To begin the 2018-2021 term, Group 6 has prepared two questionnaires to kick start some important work in this exciting and fast-moving technical area. The first questionnaire was sent in October 2018 and is directed to subject matter eligibility as it relates to emerging high-technology. The results have been gathered from FICPI delegates and our study of these results is underway. The second questionnaire has just been approved by the ExCo at our annual meeting, held this year in Turin, Italy. It relates to internet disclosures and will be sent to delegates shortly so that our work on this important topic can begin. CET 6 has also been instrumental in contributing to the FICPI/AIPLA/AIPPI Colloquium on Artificial Intelligence (AI) held in Turin just prior to the ExCo. More news about the AI Colloquium will reach you soon.
The purpose of the first questionnaire was to determine how patent subject matter eligibility criteria in various jurisdictions affect the patentability of inventions in emerging digital technologies such as AI, big data, cloud computing, software as a service (SaaS), blockchain, quantum computing, financial technologies (Fintech), virtual and augmented reality, etc. With the results of this questionnaire, CET 6 aims to develop a set of subject matter eligibility guidelines for high-tech and software patent practitioners. These results may also lead to a FICPI position paper, resolution, or further topics of study.
The first questionnaire was divided into four sections. In the first section, a case study is presented to demonstrate a typical scenario a practitioner faces, and a Canadian perspective on how to address the scenario. The second section is directed to general subject matter eligibility exclusions, as determined by legislation, jurisprudence, and practice guidelines or patent office rules. The third section is directed to claim-type exclusions. The fourth section is directed to technology-specific considerations. The first questionnaire and annexes as presented to the ExCo can be found here.
The purpose of the second questionnaire was to gather information regarding the current status of disclosures made available using electronic means, and notably on the Internet. This includes, for example, how publication dates and public availability is determined, and how dynamic information sources are treated. Of specific interest is how such information is viewed by authorities such as the courts and patent/design offices in various jurisdictions, as well as how and to what extent such views may differ between jurisdictions.
Depending on the results gathered from this survey, possible next steps will be an information paper, a FICPI position paper, resolution, or further topics of study. One desired outcome of this questionnaire is to map the so called “blank spots” – that is areas of uncertainty where users of the patent and design systems will face uncertainty as to how authorities will view or apply such prior art in practise. FICPI may have an important role to play in proposing ways to fill such blank spots as the use of information technology continues to evolve. The second questionnaire and annexes as presented to the ExCo can be found here.
We are always seeking additional FICPI members that are willing to be active in our group. If you are interested in getting involved, please email the group chair, Brett Slaney, at email@example.com.