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

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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.

Stephen Thaler’s “Creativity Machine” DABUS

Both the Australian and South African cases involved the same patent application.  In 2018, Dr. Stephen Thaler filed patent applications with the European Patent Office (“EPO”) and subsequent Patent Cooperation Treaty (“PCT”) applications, all designating an A.I. system called “DABUS” as the inventor.[4] Thaler is the owner, is responsible for and is the 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.

The EPO, UKPO and USPTO all refused the applications on the basis that only natural persons can be named as inventors in a patent application.

The Australian Decisions

In Stephen Thaler v Commissioner of Patents, Australia’s Deputy Commissioner of Patents (the “Commissioner”) determined that the Australian patent application stemming from the PCT application, namely patent application no. AU2019363177[5] (the “‘177 Application”), did not comply with the Australian patent requirement that an applicant must provide the name of the inventor of the invention to which the application relates.  As there was no human inventor, according to the Commissioner, the ‘177 Application could not proceed.  Thaler then sought judicial review on the basis that the Australian patent regime did not preclude an A.I. being considered an inventor.

Can An A.I. Invent?

The underlying question was therefore whether an “inventor” includes an A.I. system for the purposes of the Australian Patent Act and Regulations.

The Commissioner took the position that the ordinary meaning of “inventor” indicates something inherently human, namely “someone who invents, especially one who devises some new process, appliance, machine or article; someone who makes [an] invention.” It is “…the human quality of ingenuity that resides in the notion of invention” which is fundamental to the meaning of “inventor”.  An A.I. is more akin to a machine or device for making calculations and therefore not capable of such ingenuity.

According to the Australian Court, the effect of the Commissioner’s decision is that an A.I. system could invent something that satisfies all of the requirements of patentability (e.g. new, inventive and useful), but would not be patentable because the Australian Patent Act requires a human inventor.   The logical conclusion, therefore, is that if there was patentable invention but no human inventor, you could not apply for a patent. This is the antithesis, in the Court’s view, of the objective of the Patent Act.

The Patent Office’s position also confuses the question of ownership with the question of who can be an inventor. While an A.I. system could not own a patent, this does not automatically preclude it from being an inventor. By failing to recognize A.I. as an inventor, the Commissioner has unnecessarily introduced limitations and qualifications not provided in the Australian Patent Act.

Applicability to Canadian Patent Law

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.

Section 27 of the Canadian Patent Act provides that a patent shall be granted to “… the inventor or the inventor’s legal representative…”. Inventor, however, 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 courts have rejected the contention that mere calculation or testing bestows inventorship. It is clear, therefore, that an A.I. system used to calculate or analyze data in support of the inventive process is not an inventor, but merely a tool. The foregoing principle does not, however, rule out A.I. inventors; where the A.I.’s contribution extends to conception of the invention and/or its reduction to a definite and practical shape (e.g. humanlike ingenuity), such an AI system could rise to the level of an inventor.

Despite the lack of a statutory restriction on non-human inventors, the restrictions on inventor identity and the inventive process stated in the Canadian Patent Act, as interpreted by Canadian courts, make it unclear whether an invention derived from AI-based technologies would be granted patent protection.  It will be interesting to see if the Australian and/or South African examples are persuasive in Canada. 

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[1] See our LinkedIn Pulse articles here

[2] See footnote 1

[3] Thaler v Commissioner of Patents [2021] FCA 879

[4] See WIPO PATENSCOPE record here. DABUS is an acronym for “Device for the autonomous bootstrapping of unified sentience”

[5] See IP Australia here.

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.