02/07/2026
1
Session 2: Rock & Roll
Law
PRESENTED BY
Jim Jesse
www.rockandrolllaw.com
Session 3: U.S. Patent Law:
Recent Developments &
Strategies
PRESENTED BY
C. Gregory Gramenopoulos, Finnegan (US)
Dr. Serge Shahinian, Lavery (CA)
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U.S. Patent Law Developments: 2025–2026
•
Pro-Patent “Reset” at USPTO/PTAB:
New discretionary denial policies
make post-grant PTAB challenges harder. New § 101 guidance for AI
inventions and other developments support the USPTO’s role as the
“Central Bank of Innovation.”
•
Federal Circuit Tightens Standards:
Heightened scrutiny on written
description and enablement requirements for genus claims and functional
language, alongside greater appellate scrutiny of expert testimony and
awarded damages (
EcoFactor v. Google
and others).
Overview
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U.S. Patent Law Developments: 2025–2026 (cont.)
•
Supreme Court Guidance:
Hikma v. Amarin
(2026) holds that induced
infringement requires affirmative, purposeful conduct (not mere
labeling/marketing), raising the pleading bar for patent owners and
strengthening defenses for generics and others.
•
Patent Legislation Efforts:
Includes the RESTORE Act (improves access to
injunctive relief post-
eBay)
and PERA (overhauls § 101 eligibility to restore
patentability for software/AI and biotech/pharma inventions post-
Alice/Mayo
).
There is bipartisan support of these bills, but 2026 passage is uncertain.
Overview
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USPTO Updates
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Remarks by Director John A. Squires
at the 2025 AIPLA Annual Meeting
(31 October 2025)
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•
Director Squires is focused on efficiency and quality examinations
at the
USPTO — hiring, AI tools, prioritizing backlog reduction, better prior-art searches.
• These efforts are tied to innovation promotion — patents as investible “soft assets”
and the Office as the
“
Central Bank of Innovation
.”
• On the PTAB side,
a more active Director role
is evident, including use of Director
Review and steering institution decisions toward
more targeted
,
high-quality
proceedings
.
https://www.uspto.gov/about-us/news-updates/remarks-director-squires-2025-aipla-annual-meeting
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Unexamined UPR
Application Inventory
(May 2025-2026)
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USPTO Examination Metrics
First Office
Action Pendency
Total Pendency
(including RCEs)
https://www.uspto.gov/dashboard/patents/
Director Squires – USPTO Operations and AI
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“Two weeks ago, we launched our
AI-assisted Automated Search Pilot,
called ASAP!
so you get the prior art right now when it does the most
good.”
“
With AI, there’s no excuse for missing prior art.
Machines can surface it
faster, broader, and smarter than ever before. That makes the trade cleaner,
the issuance stronger, and the asset more investible.”
2025 AIPLA Annual Meeting
Washington, DC
31 October 2025
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Updates to USPTO Operations
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Patent Fraud Detection and Mitigation Working Group
(launched 15 Apr. 2025)
Goal = detect and mitigate threats to the patent system
• Identifying and reviewing potential misrepresentations to the USPTO
(including false signatures)
• Addressing mistakes in fee certifications and assertions
• Monitoring suspicious filings
• Preventing non-practitioners from engaging in the unauthorized
practice of law
• Receiving reports of potential threats to the patent system
Updates to USPTO Operations
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Patent Fraud Detection and Mitigation Working Group
(launched 15 Apr. 2025)
When appropriate, the Working
Group “will use the
administrative
sanctions process
to address
these misrepresentations.”
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What is the role AI?
v.
Innovator
Helper
AI & Patents: Inventorship
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AI & Patents: Inventorship (cont.)
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•
CAFC - “DABUS” case
:
AI cannot be named as an inventor
because the
Patent Act unambiguously requires an inventor to be a
natural person
(i.e., a
human being).
Thaler v. Vidal
(Fed. Cir. 2022).
•
USPTO - Nov. 2025 Memo
: Reaffirms that only natural persons (human
beings) can be named as inventors.
AI is a tool
(like software or lab
equipment) and does not alter the core inventorship standard.
•
No
Pannu
-factors test for AI
: The Nov. 2025 Memo also confirms that
only
a human can contribute to the conception of the invention
.
Under U.S.
law, conception is the formation in the inventor's mind of a definite,
permanent, and operative idea of the complete invention
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Patent Eligibility under 35 U.S.C. § 101
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Step One
: Is the claim “
directed to
” a
judicial
exception
(abstract
idea, law of nature, or natural phenomenon)?
•
No
End of analysis; eligible subject matter
• Yes
Move to Step Two
Step Two
: Search for an
inventive concept
• Does the claim recite
something more
than a judicial exception?
•
Not conventional, well-understood, or routine
Alice Corp. v. CLS Bank
, 573 U.S. 208 (2014)
35 USC § 101: Updated USPTO Guidance 2024
New Federal Circuit decisions included in M.P.E.P.
•
Eligibility
found for technological improvements
(including use of particular hardware or data structures)
•
Ineligibility
found when claims, e.g., merely recite data collection,
analysis, and processing
New Examples
• 47: Anomaly detection using neural networks
• 48: Speech recognition using deep neural networks
• 49: Administration of treatment using AI model
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USPTO Memo (Aug. 4, 2025) – § 101 Guidance for AI
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Issued by Deputy Commissioner Charles
Kim of TC 2100, 2600, and 3600.
• Reinforces existing law: Applies stricter discipline
for AI eligibility analysis.
• Supports Applicants: Encourages examiners to
credit specific technical improvements
.
• Warns Against “Close Call” Rejections: Examiners
should not make § 101 rejection if uncertain but
only where it is "more likely than not“
(over
50% probability) that a claim is ineligible.
https://www.uspto.gov/sites/default/files/documents/memo-101-20250804.pdf
USPTO
Ex parte Desjardins
(Appeal Rehearing Decision – Sept. 26, 2025)
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• Issued: 5 days after Director John A. Squires sworn in.
• Action: Vacated Board’s § 101 rejection and reinstated
eligibility finding for an invention providing improvements
to machine learning models.
• Policy Signals:
- Warns against categorically excluding inventions.
-
Reinforces that
Enfish
is the proper precedent
to evaluate claims directed to improvements to the
functioning of a computer or technical field.
“Panels should not evaluate AI claims at such a high
level of generality that no technical improvement can
ever be recognized.”
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Recent Federal Circuit § 101 Decision
Recentive Analytics, Inc. v. Fox Corp .
(Fed. Cir. 2025)
•
Background:
Recentive Analytics asserted four AI/ML patents directed to
generating network maps and schedules for television broadcasts and live
events. Fox filed a motion to dismiss under § 101 – patent ineligibility.
•
Asserted Patents:
U.S. Patent Nos. 10,911,811; 10,958,957; 11,386,367;
and 11,537,960. The patents fall into two groups:
• “Machine Learning Training” (’367 and ’960 patents): directed to determining
event schedules
• “Network Map” (’811 and ’957 patents): directed to generating network maps
for broadcasters
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Recentive Analytics, Inc.
(Fed. Cir. 2025) – cont.
•
Holding: The Federal Circuit affirmed the district court’s dismissal:
•
Alice
Step One
: The patents are directed to
abstract ideas
of “producing network maps
and event schedules, respectively, using
known generic mathematical techniques
”
•
Alice
Step Two
: No inventive concept, as the patents merely apply “
broad, functionally
described, well-known techniques
” using “only generic and conventional computing
devices”
• “Patents that do
no more than
claim the application of
generic machine learning
to
new data environments
,
without disclosing improvements to the machine learning
models
to
be applied, are patent ineligible under § 101.”
Take Away
:
Generic or conventional uses of AI/ML
without more do not make a claimed invention
eligible under § 101.
Recent Federal Circuit § 101 Decision
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USPTO: When Eligibility Survives
• Reversals
≈
20% of cases (confirmed 17/83).
• Common attributes of surviving claims:
– Defined technical details (e.g., network architecture, data structure).
– Technological benefits (signal compression, sensor calibration).
Examples
:
Ex parte Huang
(image encoding matrix
→
efficiency gain)
Ex parte Chen
(sensor latency calibration
→
physical effect)
Take Away:
Recite AI/ML technical details and/or tie function to
measurable or specific
technological improvement
.
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PTAB Institution and
Invalidation Rates (pre-2025)
https://www.uspto.gov/sites/default/files/documents/ptab_aia_fy2024__roundup.pdf
FY20-FY24:
Institution rates rose to 68%
PTAB Outcomes FY2024:
446 Final Written Decisions
70% - All Claims
Unpatentable
15% - Mixed
15% - All Claims Survived
68%
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Director Squires – PTAB Institutions and
Director Review
Authority for institution decisions under America Invents Act (AIA)
shifted back to the Director of the United States Patent and
Trademark Office.
“Under oath in my confirmation hearing before the Senate Judiciary
Committee …I expressed discomfort that data seemed to be “skewed”
in favor of certain provisions (namely IPRs over PGRs and a
very high
invalidation rate
). To me, this raised questions about both the
administration of IPR proceedings and their institution in particular.”
Director Squires - Open Letter
Bringing the USPTO Back to the Future
17 October 2025
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Discretionary Denials
March 26, 2025 Acting Director Memo: Interim Process for PTAB
Workload Management
- Created bifurcated process between: (i)
discretionary considerations
and
(ii)
merits
and other non-discretionary statutory considerations.
- Discretionary denials based on
Fintiv
,
General Plastics
,
Advanced Bionics
and
other factors: (1)
prior adjudication
of the validity of the claims, (2)
change in
law
or precedent, (3)
strength of the petition
, (4) relance on expert testimony,
(5)
settled expectations
of the parties, (6) compelling economic, public health,
or national security interests, and (7)
other considerations
bearing on the
Director’s discretion.
www.uspto.gov/sites/default/files/documents/InterimProcesses-PTABWorkloadMgmt-20250326.pdf
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Discretionary Denials
PTAB: New Bifurcated Review Procedure (March 26, 2025)
•
Separate briefing
by Patent Owner and Petitioner on discretionary review factors.
•
Director renders decision
after consultation with at least three PTAB judges.
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Impact of New Bifurcated Review at PTAB
• Recent PTAB changes have
led to a
significant rise in
institution denials
, reflecting
the stricter application of
Fintiv
and related factors.
• In
Q3 2025
, the PTAB issued
a record-high 254
discretionary denials, a
77.6%
increase over the first half
of the year
and
a 206% jump
compared to all of 2024
.
Mar 26, 2025
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Discretionary Denial – How to avoid?
Case Example: Material USPTO Error
In
Anthony Inc. v. ControlTec, LLC
, the Acting Director referred both petitions to the
Board after finding the petitioner showed persuasive
evidence of a material USPTO
error during prosecution
. Specifically, evidence that the examiner overlooked
teachings of a prior art reference despite allowing both applications on the first action
following a restriction and divisional filing.
Although the patents (’181 and ’847) had been in force roughly 18 and 17 years and
were expiring around the institution window, the Director held that reviewing the
potential Office error is an appropriate use of resources and outweighed age-based
“settled expectations” concerns on this record.
Take Away
:
Evidence of a material USPTO error can avoid a
discretionary denial.
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Alternatives to PGRs/IPRs
Ex Parte
Reexaminations (EPRs)
• Due to the PTAB practice
changes,
patent challengers
are seeking alternatives
,
notably EPRs, which avoid
discretionary review factors.
•
EPR requests hit a Q3 2025
record of 198
, with 425 in the
first nine months putting 2025
on pace to surpass 2024’s
total of 437.
Mar 26, 2025
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35 USC § 112 Requirements
•
As part of
quid pro quo
for receiving a patent, the application must
meet several requirements:
•
Written description
of the invention
•
Enable
the invention
•
Clearly claim
the invention
•
Sufficiency of the disclosure and claims is generally measured from
the viewpoint of a person of ordinary skill in the art (POSITA)
• Level of skill will vary depending on technical field of the claimed
invention
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•
PowerBlock Holdings, Inc.
v.
iFit, Inc.
(Fed. Cir. Aug. 11, 2025):
Reversed
invalidity ruling; clarified that mechanical-automation claims with
functional elements
can be eligible and sufficiently described
if they recite specific structure or
improvements
, providing guidance for hybrid software-hardware inventions.
•
Duke University v. Sandoz Inc.
(Fed. Cir. Nov. 18, 2025):
Overturned $39M jury
verdict; reinforced strict written description for genus claims with functional language
(broad functional limitations without representative species or common
structural features).
Applies by analogy to software genus claims.
•
Seagen Inc. v. Daiichi Sankyo
(Fed. Cir. Dec. 2, 2025):
Heightened disclosure
requirements
for chemical/biological functional claims; signals parallel scrutiny for
software methods claiming results without detailed algorithms or implementation.
Recent CAFC Cases on Written Description &
Enablement (2025–2026)
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•
Holding:
The Federal Circuit affirmed dismissal of the infringement suit, ruling
the software claims (
directed to result-oriented functional claiming for web
conferencing or similar systems
) invalid under § 101 as abstract and lacking
an inventive concept. The court emphasized that the claims used broad functional
language without sufficient technological improvement or specific implementation
details.
•
Key Takeaway on § 112 (Written Description/Enablement):
While
primarily a § 101 case, the opinion highlights ongoing scrutiny of
functional
claiming
. Broad functional limitations without adequate disclosure of how the
function is achieved often
fail to satisfy written description and enablement
(cross-referencing stricter genus/functional claim standards from biotech cases
like
Duke v. Sandoz
and
Seagen
). The court noted
the claims were “result-
oriented” and lacked the necessary specificity
.
US Patent No. 7,679,637 LLC v. Google LLC
(Fed. Cir. Jan. 22, 2026)
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•
Board reversal of both of the Examiner’s rejections.
•
Technological Improvement (§101):
The Board emphasized that the claimed
hybrid system enabled quantum computers to solve problems they previously
could not handle due to hardware limitations (e.g., limited circuit depth and noise).
This was deemed a
"clear technological improvement"
.
•
Focus of the Invention:
The Board noted that the "additional elements"
(controlling a plurality of qubits on a quantum computer) were the central focus of
the invention, not just incidental data processing.
•
Written Description (§112):
The Board found that the original claims themselves,
along with
specific examples in the specification
, provided sufficient evidence
that the inventor possessed the claimed "genus" of functions.
Ex parte Yudong Cao
(Appeal No. 2024-002159 – Feb. 13, 2025)
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•
Holding:
The Federal Circuit
vacated a $20M damages award, holding that
the district court abused its discretion by admitting the expert testimony on a
reasonable royalty — which was not
rigorously tied
to case facts
with
proper apportionment
.
•
Key Takeaway:
The expert’s per-unit royalty rate derived from
lump-sum
portfolio licenses
lacked sufficient support
showing the rate reflected only
the asserted patent’s value
.
Expert must provide reliable, non-speculative
analysis
— mere reliance on broad licenses without adjustment is risky.
Expert Testimony & Damages
EcoFactor, Inc. v. Google LLC
(Fed. Cir. 2025)
(en banc)
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•
Rex Medical v. Intuitive Surgical
(Fed. Cir. 2025):
Affirmed exclusion of a
damages expert’s testimony and reduction of a $10 million jury award to $1
where the
patentee failed to present admissible, apportioned evidence
.
Reinforces strict requirements for reliable expert testimony
.
•
Ollnova Technologies v. ecobee
(Fed. Cir. June 4, 2026):
Criticized overly
simplistic jury verdict forms; highlighted the
need for clear, detailed verdicts
to support damages awards
on appeal, showing increased willingness to
scrutinize procedural aspects of damages trials.
Other CAFC Cases on Expert Testimony &
Damages (2025–2026)
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Induced Infringement (35 U.S.C. § 271(b))
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•
Core Elements:
Requires (1) direct infringement by a third party, (2) knowledge
of the patent, and (3)
active, affirmative steps
to encourage or induce the
infringement (not mere passive conduct).
•
Recent Supreme Court Guidance –
Hikma v. Amarin
(2026):
Unanimous
ruling clarified that
ambiguous statements or labeling
(e.g., “
skinny labels
”) alone
do not suffice; patentee must plausibly allege purposeful encouragement. Raises
pleading bar and bolsters defenses, especially for generics and tech companies.
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Induced Infringement (35 U.S.C. § 271(b))
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Hikma v. Amarin
(2026)
•
Key Takeaways
•
Affirmative Conduct Required
: Induced infringement under § 271(b) requires
active,
purposeful steps to encourage direct infringement
— mere ambiguity, passive
statements, or labeling that could be read as encouragement is insufficient.
•
Pleading Standard Raised
: Patent owners must plausibly allege specific inducement in the
complaint; speculation about how third parties (e.g., physicians) might interpret materials is
not enough.
•
Practical Impact
•
Stronger Defenses
: Benefits generics, software/hardware makers, and others facing
inducement claims based on marketing, instructions, or labels — makes such suits harder
to survive dismissal.
•
Litigation Strategy:
Patentees must gather stronger evidence; defendants should
challenge pleadings early under
Twombly
/
Iqbal
.
U.S. Patent Litigation: Patent Reform Bills
•
Current Landscape
• Proposed legislation to address issues such as injunctive relief, Section 101
eligibility standards, and PTAB procedural issues.
• Uncertainty exists in view of midterms and other 2026 priorities.
•
Bills Reintroduced (2025); Bipartisan Support
•
RESTORE Patent Rights Act
: Aims to enhance enforcement by reinstating a
presumption in favor of permanent injunctions.
•
Patent Eligibility Restoration Act (PERA)
: Seeks to define patent eligibility,
offering greater certainty in areas like AI and software innovations.
•
PREVAIL Act
: Proposes PTAB procedural reforms, including new limits to curb
abusive filings by challengers.
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•
Beware of “Due Care”
•
CA Patent Term Adjustment regime has begun
•
AI Inventorship
•
Subject Matter
• Dosage regimens
• Computer-implemented inventions
•
Novelty
• Incorporation by reference
• Device as prior art
•
Infringement
• By common design
• Design/development activities
Canadian Patent Update - overview
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•
Canada traditionally had abandonment/reinstatement “by right”
system – missing a deadline results in abandonment;
reinstatement possible by right (i.e., without reasons) within 1
year of missed deadline.
•
Since October 30, 2019, this system no longer applies for
missed deadlines in respect of:
• maintenance fees
– due annually starting on 2
nd
anniversary of filing date
• requesting examination
– due 4 years from filing date
•
Rather, a new “due care” standard is applied in such situations
•
Note: Abandonment/reinstatement “by right” system has been
maintained for other deadlines (e.g., response to Office Action).
Due Care
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•
If MF not paid by due date, CIPO “missed payment” notice is sent.
•
Missed MF may be paid together with a late fee by later of:
• 2 months from date of notice
• 6 months from original MF deadline
(since notice typically issues quickly, consider 6 months as late payment window)
•
Missing the late payment deadline results in a different category of
abandonment (with 1 year to reinstate) – reinstatement requires
convincing CIPO that the failure occurred in spite of due care
having been taken.
Due Care: Maintenance fee (MF)
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*Excerpt from CIPO materials
Due Care: Maintenance fee (MF)
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•
CA national phase application with missed maintenance fee; not paid
within late payment period resulting in abandonment requiring a
showing of due care for reinstatement
•
CIPO rejected request for reinstatement – “due care” not established
•
Judicial review of CIPO’s decision was first overturned by Federal
Court (FC)
•
CIPO appealed to Federal Court of Appeal (FCA); FCA set aside FC
decision thus restoring CIPO’s refusal
Due Care: Matco Tools Corp v. Canada
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•
Maintenance fees (MFs) paid by a third-party annuity service
•
MFs outside of mandate of CA agents and Applicant’s local (US) patent
firm based on applicant’s instructions
•
CA agent had no contact with applicant; correspondence with local firm
•
Applicant switched annuity service providers – data migration error
resulted in missing MF payment; CA and US firms unaware of data
migration
•
CA agent forwarded “late payment” notice to US firm, who did not
forward the notice to applicant in view of standing instructions to not act
in respect of MFs
•
Late payment deadline was missed, resulting in abandonment and
attempted reinstatement under due care standard
Due Care: Matco Tools Corp v. Canada
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•
Data migration error not relevant, because it caused missing the original
MF deadline, not the late payment deadline resulting in abandonment
•
Due care must be shown by all parties involved
•
Standing instructions to not act on MFs insufficient – late payment notice
should have been forwarded to applicant
•
Take home messages:
• In realistic terms, consider the late-payment (6-month) deadline the last opportunity to
pay the MF
• Forward all communications to applicant
• Ensure that correspondence information and instructions are up to date
Due Care: Matco Tools Corp v. Canada
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•
To qualify for a PTA, a patent must meet the following criteria:
• Have a filing date (PCT filing date for a CA national phase case) on or after Dec. 1, 2020;
• Have an issue date on or after Dec. 2, 2025;
• Pass the “5/3 threshold” – see below.
•
PTA calculation: The “5/3 threshold” – additional days to patent issuance
beyond the later of:
• 5 years from the CA NP entry date for a PCT-based case, the Canadian filing date for a
non-PCT case, or the “presentation date” of a divisional application; or
• 3 years from date of requesting examination.
•
Not automatic – you need to ask for it
• request must be filed together with a fee (currently C$2,567.50) within three months of
patent issuance
• If granted, additional maintenance fees required for each additional year of term
CA Patent Term Adjustment (PTA) system
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•
Computer scientist Stephen Thaler developed AI system “Device for
the Autonomous Bootstrapping of Unified Sentience” (DABUS)
•
Thaler filed patent applications naming DABUS as the sole inventor
and himself as the Applicant/Owner
•
Patent Appeal Board (June 2025) concluded that only humans can
be inventors
•
Decision consistent with multiple jurisdictions (US, UK, EP, ZA, AU)
Inventorship
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•
Pharmascience Inc. v. Janssen Inc.
•
Appeal of Federal Court of Appeal (FCA) decision currently before
Supreme Court
•
Issue: Is the patent directed to an unpatentable method of medical
treatment?
•
Later-gen pharma inventions often relate to how the drug is used, e.g.,
dosage and schedule/timing of administration
•
Historically, fixed values are generally considered to be patentable,
whereas variable values (ranges) are sometimes considered to require
professional skill and are thus unpatentable – each case turns on its facts
Subject matter: Dosage regimen
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Use of a dosage form of paliperidone as paliperidone palmitate formulated as a depot formulation of an aqueous nanoparticle
suspension for administration by intramuscular injection for treating a psychiatric patient in need of treatment for schizophrenia,
schizoaffective disorder, or schizophreniform disorder, wherein the dosage form comprises:
a) a first loading dose comprising about 150 mg-eq. of the depot formulation of paliperidone as paliperidone palmitate
adapted for intramuscular administration into a deltoid muscle of the psychiatric patient on a first day of treatment;
b) a second loading dose comprising about 100 mg-eq. of the depot formulation of paliperidone as paliperidone
palmitate in a dosage form adapted for intramuscular administration into a deltoid muscle of the psychiatric patient one week ± 2
days after the first loading dose; and
c) a maintenance dose comprising about 75 mg-eq. of the depot formulation of paliperidone as paliperidone palmitate
adapted for intramuscular administration into a deltoid or a gluteal muscle of the psychiatric patient according to a continuous
schedule having a monthly ± 7 days dosing interval after the second loading dose.
Subject matter:
Janssen v. Pharmascience
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•
Hearing was on Oct. 5, 2025; expect SCC decision in 2026
•
Principles discussed in FCA decision:
• “The question of patentable subject matter does not necessarily turn simply on
whether the claim in question is limited to a fixed dosage and schedule. Rather, the
proper question is whether professional skill and judgment would be required in
using the patented invention. Though a fixed dosage and schedule may be a good
indication that no such skill and judgment would be required, evidence may
indicate otherwise.”
• Focus is not on whether to use the claimed invention, but rather on how to use the
claimed invention. If the latter does not involve professional skill, the claim is
patentable.
•
Stay tuned!
Subject matter:
Janssen v. Pharmascience
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•
Dusome v. Canada
•
Appeal to Federal Court of rejection by Patent Appeal Board (PAB)
•
Method of playing a wagering poker game; includes claims directed to
playing with physical cards and others directed to playing on a computer
•
PAB ignored physical components of claims (cards, computer) and decided
that the “actual invention” was the rules to play the game, therefore the
“actual invention” does not have a physical component or effect
Subject matter: Computer-implemented invention
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Latest in a series of such subject matter cases:
•
Amazon
: No general exclusion for business methods; purposive
construction required; subject matter must have “physical existence or
manifest a discernible effect or change”
•
Choueifaty
: Problem-solution approach cannot be used to determine
essential elements of claim.
•
Benjamin Moore
: FC determined that CIPO erred in its determination; on
appeal FCA struck down 3-part test of FC and sent case back to CIPO for
redetermination (they were once again rejected and not appealed)
Subject matter: Computer-implemented invention
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•
CIPO erred by not using purposive construction
•
CIPO’s erred by using their “actual invention” approach previously rejected
by the FCA, in which only new knowledge is considered as part of the
“actual invention”
•
In identifying the “actual invention”, CIPO stripped away the physical
cards/computer components, leaving only the rules and the algorithm
•
CIPO applied the wrong test for a patentable art, instead of asking whether
the claims add new knowledge with a result having commercial value
•
Sent back to CIPO for reconsideration; FC decision not appealed
•
Still in PAB proceedings; continues to be rejected
Subject matter:
Dusome v. Canada
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Alexion Pharmaceuticals v. Amgen Canada
•
Patent claim directed to an antibody
•
US ‘972 cited for novelty – contains some but not all sequences of claimed
antibody – missing portion of sequences found in US ‘245, incorporated by
reference into US ‘972
•
Alexion argued that “mosaic” of multiple references not permitted for
novelty
•
Amgen argued that based on incorporation by reference, US ‘245 is part of
US’972 and that skilled person could reconstruct the claimed antibody
Novelty
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•
General principle is that all necessary information must be in a single prior
publication
•
Must be clear direction to lead skilled person to invention without chance for
error
•
Court determined that incorporation by reference did not provide clear
direction, rather, was more of a complex reverse engineering exercise
•
Thus, combination of multiple documents and reverse engineering did not
meet the standard for anticipation
•
Interestingly, combination of ‘972 and ‘245 also insufficient to establish
obviousness – court found that skilled person would not have combined refs
without some creativity and hindsight
Novelty
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AGI Suretrack, LLC v. Farmers Edge Inc. (FCA)
•
AGI patent relates to devices and computer systems to collect and process
agricultural data from agricultural equipment (e.g., seeders, etc.)
•
GreenStar 3 system was the cited prior art
•
FC relied on GreenStar 3’s user manual, advertising brochures, ISOBUS manual,
etc. for a finding of anticipation
•
AGI argues that referring to multiple documents was an improper mosaic of prior art
•
Court disagreed, and concluded that the documents are not the prior art, rather, the
GreenStar device is, the documents were used to obtain a description of the
functions and properties of the single anticipatory device, the GreenStar 3
Novelty
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•
Adeia Guides Inc. v. Videotron Ltd.
•
Videotron delivers IPTV services in Canada using architecture from Comcast and
Brightcove
•
Adeia argued that Videotron was orchestrating infringement
•
Videotron argued that some steps of patented method occurred outside Canada
and no principle of infringement by common design
•
Court determined that Videotron is liable for infringement by common design with
Comcast, because of their agreement to deliver IPTV services using Comcast’s
XFINITY X1 platform – i.e., subcontracting part of infringement to Comcast
•
No similar infringement by common design with Brightcove – lack of evidence for a
similar contractual agreement
Infringement based on common design
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ProSlide Technology Inc. v. WhiteWater West Industries, Ltd.
(FCA)
•
Major competitors in waterslides
•
Lower court found PS’s patents to not be infringed
•
PS argued that virtually all of WW’s design and development activities took
place in Canada. However, no physical manufacturing in Canada
•
Lower court: “Where a patent claims a physical object, the patentee’s
exclusive rights … to ‘use’ the invention extend only to that object. They do
not also include the use of conceptual designs or drawings of that object.”
•
PS argued for a broad interpretation of “making” the invention
•
FCA disagreed and noted that generating designs/drawings is not “making”
the invention – further noting that the proposed broad interpretation would
be problematic as it would introduce uncertainty in determining infringement
Infringement: design activities insufficient
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•
Beware of “Due Care”
• Diligent and up-to-date correspondence
•
CA Patent Term Adjustment regime has begun
• In practical terms, not really a game-changer and will likely be rare
•
AI Inventorship
• CIPO aligns with other jurisdictions
•
Subject Matter
• Dosage regimens: Hopefully, recognizing such innovation as patentable will continue
• Computer-implemented inventions: New guidelines, same old approach. Improving operation of
computer and more specific (rather than generic) physical components are helpful.
•
Novelty
• Nuances where different components can be considered together
•
Infringement
• Clear contractual collaboration can be cross-border
• Absence of physical product cannot infringe claim to a product
Canadian Patent Update - summary
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Serge Shahinian
Lavery
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