Author: Mark Penner

About Mark Penner

Mark D. Penner’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.

Analysis, Intellectual property

NFTs and Intellectual Property: An Overview in Three Parts (Part 2 of 3)

woman in front of digital tech

This article is part of a three-part series on NFTs:

In the first part of our series on NFTs,[1] we discussed what an NFT is and what “ownership” of an NFT provides.  You’ll recall that a non-fungible token is a unique blockchain-based “token” that consists of a chain of digital references to a specific intangible asset (e.g., digital files encoding music, art, video, icons, etc.). 

In this instalment, we consider what NFTs could mean for IP rights creators, owners, and users.

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Analysis, Intellectual property

NFTs, Intellectual Property and Art: An Overview in Three Parts (Part 1 of 3)

woman in front of digital tech

This article is part of a three-part series on NFTs:

Earlier this year, something called an “NFT” sold for $69 million USD at auction.[1] This was likely the first time most people had ever heard the term “NFT.” From that point forward, discussions of various NFTs were everywhere; as a result, they entered mainstream consciousness, much like Bitcoin had nearly ten years ago. In fact, NFT or “non-fungible token” was named word of the year for 2021.[2]

Artists, musicians, and other creatives now saw in their work the potential for monetization. Investors woke up to the value of digital art assets. Indeed, in the first half of 2021, NFT transactions totalled in the billions.

Despite their near ubiquity, it is unclear to many what NFTs are and what role they play in the digital marketplace.  Just as it may be unwise for investors, collectors, and creators to ignore the burgeoning NFT industry, it may be equally unwise for those same people to ignore potential issues arising from this new asset class.  Even more unclear is what, if anything, these new digital assets mean for the users and owners of intellectual property (“IP”) rights. 

This series of articles tries to demystify NFTs and discuss what impact they may have for creators, users, and owners of IP rights. We aim to shed light on the intersection of technology, the creative industries, and IP law that arises with NFTs.

In our first article, we will discuss the nature of NFTs. In our second article, we will discuss the impact of NFTs on IP rights holders. In our final article, we will discuss the applicability of NFTs in the world of digital art.

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Analysis, Canada, Patents

Federal Court of Canada provides narrow interpretation of the scope of Patent Agent Privilege

law books

One does not need to be a legal scholar to know that confidential communications between lawyers and their clients for the purpose of seeking and giving legal advice are generally privileged.  The so-called “solicitor-client” privilege is a cornerstone of law and allows clients and their lawyers to freely discuss legal issues without unintended disclosures.  Thus, apart from certain exceptions, Canadian courts will not compel production of privileged communications such as emails, letters and reports exchanged between clients and their lawyers for the purpose of legal advice.

For years, this special treatment did not attach to communications between clients and their patent agents.  This was problematic because patent agents often provide equally strategic and sensitive advice and opinions in the specific area of patents.  As a result, it was common practice to channel such communications through lawyers to shroud these under solicitor-client privilege.

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Industrial Design, Patents

Australia and South Africa find Artificial Intelligence “Inventor” compatible with Patent Law

woman in front of digital tech

Traditionally, an “inventor” in a patent application has been defined as a person who invented or discovered the subject matter of the invention. Until recently, it has not been necessary to consider whether a non-human entity could be considered an inventor.  With the development of artificial intelligence based technology (“A.I.”), we need to consider the issue. If we have reached a point where A.I. could independently invent or create protectable IP, could such an A.I. be listed as an inventor?[1]

To date, several patent offices considering this issue have found that A.I. cannot be considered an inventor.[2]  Two recent decisions may be showing a change in this trend.

In Stephen Thaler v Commissioner of Patents[3], the Federal Court of Australia is the latest to consider whether the definition of “inventor” excludes a non-human artificial intelligence. In a ground-breaking decision, the Australian Court found that a non-human “inventor” is not inconsistent with inventorship under Australian law. 

More recently, South Africa issued a patent designating an A.I. system as the inventor.  However, South Africa does not offer formal examination so the issue of whether A.I. systems are properly identified as inventors does not appear to have been considered.

It will be interesting to see what impact, if any, these decisions will have on Canadian patent law.

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Canada, Intellectual property

Promoting Canadian Intellectual Property on World Intellectual Property Day

Copyright sign cut-out on an urban background.

Today, April 26th, is World Intellectual Property Day.  This year’s theme is shining a light on the critical role of small and medium-sized enterprises (SMEs) in the economy and how they can use intellectual property (“IP”) to build stronger, more competitive and resilient businesses.

On April 19th, 2021, the Canadian government released its first budget under the COVID pandemic (“Budget 2021”).  Budget 2021 addresses the Government of Canada’s fight against COVID-19 and its desire to ensure a robust economic recovery.  As part of the latter, Canada is investing in innovation.

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