Artificial Intelligence not an “Inventor” under European Patent Law: Is Canada heading down the same path?

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As reported in an earlier ANGLE post, we discussed how 2021 saw a number of patent office developments with regard to whether a non-human entity could be considered an inventor under various patent regimes.  Prior to 2021, several patent offices had considered this issue and found that A.I. could not be considered an inventor.  In 2021, however, an Australian Court found that a non-human “inventor” is not inconsistent with inventorship under Australian law and South Africa issued a patent designating an A.I. system as the inventor. 

It would appear at the end of 2021 that some patent offices were trending towards recognizing a non-human entity, like A.I. based technology, as an inventor. Could this trend continue?

Maybe not.  With a decision just before Christmas of 2021 from European authorities, any such trend may have been stopped in its tracks.

Stephen Thaler’s “Creativity Machine” DABUS

Much like Australia and South Africa, the European patent cases involved patent applications filed by Dr. Stephen Thaler in 2018.[1]  These patent applications designated an A.I. system called “DABUS” as the inventor.  Thaler was identified as the applicant as he was the owner and operator of the computer on which DABUS operates.  Thaler stated that he had “acquired” the right to the inventions from the inventor by being its successor in title, arguing that as the machine’s owner, he was assigned any intellectual property rights created thereby.

In an earlier decision,[2] the European Patent Office (“EPO”) refused the applications on the basis that only natural persons can be named as inventors in a patent application.  Similar decisions were reached in the UK and US patent offices.  The US and UK decisions were later upheld.[3]

The European Decisions

On December 21, 2021, in public oral proceedings dismissing Thaler’s appeal, the Legal Board of Appeal of the EPO (the “Board”) confirmed that an inventor designated in a patent application must be a human being under the European Patent Convention (“EPC”). A written decision and reasons will be issued later.

In its communiqué, the Board did provide some additional details. The central question, as with all other other cases, was whether the applicant, when applying for a European patent, can designate as the inventor an A.I. system since the inventions had been created autonomously by DABUS.

According to the European Patent Convention (“EPC”) the designation of the inventor is a formal requirement which must be fulfilled in accordance with the EPC and its applicable rules. The EPO refused both applications as the designation of inventorship was not consistent with the EPC for two reasons. First, it concluded that only a human inventor could be an inventor within the meaning of the EPC. Secondly, the EPO was of the opinion that a machine could not transfer any rights to the applicant, namely Thaler. The EPO considered that the statement that the applicant was successor in title because he owned the machine did not satisfy the requirements of the EPC.

The Board, in its decision, dismissed the appeal and orally provided the following reasoning in both cases:

  • Under the EPC, the inventor had to be a person with legal capacity; and
  • The statement as to entitlement to the application had to be in conformity with the  EPC, and the EPO was competent to assess whether a statement indicating the origin of the right to the European patent was proper under the EPC.

Canada appears to be taking a consistent position with EPO

Canadian courts have yet to explicitly consider whether an invention generated by a non-human is patentable, so it will be interesting to see how classical interpretations of patent law will be applied to non-human inventors.

We may not have to wait too long for an answer, however, as the above noted Thaler applications are now before the Canadian Intellectual Property Office (“CIPO”).

An “inventor” is not defined in the Canadian Patent Act. The Patent Act does not, on its face, restrict who can be an inventor. Canadian courts have found that the inventor is the person whose conception gives rise to the invention, and/or the person who sets the conception or discovery into a definite and practical shape.

Canadian patent application No. 3,137,161, corresponding to Thaler’s Patent Cooperation Treaty (“PCT”) application, is currently pending before CIPO.  In a letter from the patent office dated November 8th, 2021, CIPO has taken the position that under Section 27(4) of the Patent Act, a patent application must be filed by an inventor or the legal representative of the inventor, the inventor needs to be identified and the applicant must file a statement of entitlement.  As the inventor is a machine and cannot “… have rights under Canadian law or transfer those rights to a human, …”, the application does not comply with the Canadian Patent Act and Rules.  CIPO has now requisitioned that the applicant “… may attempt to comply by submitting a statement on behalf of the Artificial Intelligence (AI) machine and identify, in said statement, himself as the legal representative of the machine.”  Thaler has three months to respond.

The Canadian part in this saga is just beginning…

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[1] EP 3564144 and EP 3563896.

[2] See https://www.epo.org/news-events/news/2020/20200128.html.

[3] For the US see Thaler v. Iancu, et al., 2021 U.S.P.Q.2D (BNA) 917 (E.D. Va. September 2, 2021). For the UK see Thaler v The Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat)

Partner, Trademark Agent, Patent Agent at Fasken | Website | + posts

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.