Posted on March 30, 2023
Patenting the Metaverse
The Metaverse as a borderless virtual world encompassing work, play, entertainment, and more, is the next evolution of the Internet as we know it. It’s a real opportunity to drive economic growth and bring its benefits to everyone, everywhere. With digitalization going forward, there’s no doubt that IP will be one of the key drivers in this field.
But what exactly are the IP issues that arise within the Metaverse?
This is what we recently explored at a panel on “A multitude of IP issues” as part of the Seventh Session of the WIPO Conversation – Intellectual Property and the Metaverse. There were over 3,000 registrants from more than 140 countries for the conference, and 450 showing up for the panel.
I’m thrilled to have been invited to join this all-star lineup:
- Moderator: Konstantinos Georgaras, Chief Executive Officer, Canadian Intellectual Property Office, Canada
- Raquel Xalabarder Plantada, Chair of Intellectual Property, Professor and Director of the Law and Political Science Department, Universitat Oberta de Catalunya, Spain
- Rasha Al-Ardah, Legal Counsel, Al-Tamimi & Associates Advocates and Legal Consultants, UAE
- Mitchell Adams, Senior Lecturer and LLB Course Director, Swinburne Law School, Australia
- Bastian Best, Patent Attorney, BESTPATENT, Germany
- Andres Guadamuz, Reader in Intellectual Property Law, University of Sussex., UK
- Jean-Marc Deltorn, Associate Professor, Center for International Intellectual Property Studies (CEIPI), France
- Jesse Wrensch, Michalsons Law Firm, South Africa
- Patricia Adjei, First Nations arts and culture director, Australia Council for the Arts, Australia
The panel’s task was to explore what the various intellectual property issues are that arise within the metaverse, and how these might be addressed through a combination of existing IP protections and new approaches to IP management. By considering these issues in a holistic manner, the goal of the panel was to provide a nuanced and well-rounded view of the role of IP in the metaverse, and help to identify key challenges and opportunities for innovation and economic growth in this space.
I took on the topic of patenting platforms, AI and software in the Metaverse. What follows is a reprint of my speaking notes:
Patenting platforms, AI and software in the Metaverse
Thank you very much for the opportunity to present on patents in the Metaverse, including platforms, AI and software. So, each of platforms, AI and software are huge topics in themselves, and I’ve given multi-day workshops on patenting AI alone, so bear with me that this 7-minute presentation can only give a very high-level overview of these topics.
But to give you a feeling of why patents are indeed relevant in the Metaverse, I went on Espacenet this morning and I searched for the term “Metaverse”. And there were 2,392 hits. So, roughly 2.5 thousand published patent documents which mention the Metaverse. That’s a lot of patent documents to consider when you’re trying to figure out if you have freedom-to-operate in this space, right? Not to mention the patents that don’t even mention the term “Metaverse” but still cover technologies applicable in this field, of course.
Now, I’d like to structure my presentation along two aspects of the Metaverse, or let’s think about them as layers. The first one being the platform layer, meaning the technical infrastructure on top of which the second layer runs, namely Metaverse applications. So, we have the platform layer and on top we have the application layer. And I will try to sketch out some unique challenges of patents on each of these two layers.
Patenting the platform layer
Now, on the platform layer, we can distinguish between the backend and the frontend.
On the backend, we’re basically talking about networked computer systems, including more traditional client/server architectures and communication protocols, but also things like distributed ledgers and the blockchain.
On the front end, we’re talking about user devices to access the Metaverse, including computers, smartphones and also things like virtual reality and augmented reality devices, smart glasses, heads-up displays, and even smart sensors and IoT devices.
Obtaining patents on the front end of the platform layer is actually relatively straight-forward in my experience, and the patent systems around the world are generally capable of dealing with these things properly, as far as the “hard” technical aspects of the devices are concerned. We’re basically talking about hardware innovations here.
On the other hand, obtaining patents gets more interesting on the backend of the platform layer, for a number of reasons:
Are patent offices ready for the really new technologies?
One reason is that, as soon as you’re thinking about innovating on the backend part, you will come into contact with filing patents for things like blockchain or DLT architectures, which are still relatively new for patent offices given the timelines we’re dealing with in the patent system. And the way how different patent offices around the world deal with these new technologies may differ from office to office. As one example, the European Patent Office has in my experience quite a stable patentability framework for tackling the technical aspects of blockchain, for example, but this might be different in other jurisdictions.
And this is a real challenge for patent applicants, because the Metaverse naturally executes on the Internet, or “in the cloud”, and it can basically execute anywhere, so you’re immediately faced with the challenge that today’s patent systems are territorial while the technical infrastructure of the Metaverse is truly global.
Beware of divided infringement!
And this then extends also to the enforcement side of patents, where issues like divided infringement come up immediately. What you need here as a patent applicant is a careful approach to drafting your patents so that they can actually be infringed in such a globally networked scenario. One of the mistakes I see all the time is that some applicants tend to focus too much on the backend side and later have trouble enforcing their patents because you just don’t know where your competitors’ servers are located. So one thing I’m always looking into when I’m drafting these types of patents is to try to also cover the functionality which happens on the user devices, because there you know where they are executing and the chance of figuring out what’s actually happening is higher.
So, to sum up the platform layer, what is needed is a truly global patent filing strategy right from the beginning and a deep understanding and careful selection of which of the interacting components to protect.
Patenting the application layer – use cases, applications and business models
Turning to the application layer, things even get more complex because by definition we’re moving up the abstraction layers and things get less tangible, less physical, by nature.
And here it gets really interesting because clever innovators in the space will of course try to patent all sorts of use cases, applications and even business models in the Metaverse which by definition happen to a large extent virtually, because the Metaverse is a virtual world, right?
Here, we’re talking about things like chat bots, which might be difficult to patent in certain jurisdictions. For example, the EPO has this strong notion of a required technical effect, which regularly boils down to exploiting computing resources in a clever way, such as processing power and storage space, but if the effect, or purpose, of a unique novel chat bot is merely a more intuitive and natural interaction with the user, this may hardly qualify as a technical effect at the EPO.
The same with AI or machine-learning inventions. While AI-based inventions are perfectly patentable at the EPO if they are applied to, and restricted to, solving “hard” technical problems, for example for controlling an industrial robot, using the same AI to control a virtual bot in the Metaverse so that it behaves like a human, is probably considered a non-technical use of AI.
We’re basically entering the arena of simulation programs here, which are difficult to patent at the EPO right now. However, these restrictions do not apply globally, and in my experience patents for these things are currently easier to obtain in the U.S., which, very roughly speaking, requires only a “practical” application, not a “hard technical” one.
So, to sum it all up, in my experience the Metaverse is particularly challenging in terms of patent protection, but also an exciting playground to really think hard about global patent drafting and enforcement strategies.
In case you’re an IP professional and you’re interested in actually working on these topics, you may consider joining I3PM, the International Institute for IP Management, where we have a dedicated committee for Software Patents and we will soon also have a committee dedicated to AI and IP specifically.
So, as a take home message, here are three key challenges I tried to outline in my presentation today:
- The definition of patentable subject-matter: The Metaverse is a relatively new concept, and patent offices are still grappling with what kinds of inventions can be patented in this space, in particular with regards to the definition and boundaries of the notion of “technical effect”
- Distributed patent infringement: In the Metaverse, it may be challenging to identify instances of patent infringement given the decentralized and oftentimes anonymous nature of many Metaverse platforms.
- International considerations: Patents are granted on a country-by-country basis, which can make it challenging to protect inventions that operate across physical boundaries in the Metaverse.