Category Archives: 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.

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.

Important changes are proposed to Canadian patent prosecution

Parliament Ottawa

The Government of Canada is proposing regulatory amendments to the Canadian Patent Rules. The proposed amendments were published on July 3, 2021 and the public has 30 days to provide comments[1]. The final rules are expected to be published in fall 2021 and implemented in late 2021.

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Ontario Court Affirms the Enforceability of Patent No-Challenge Clauses

In a recent decision[1], the Ontario Superior Court of Justice, Divisional Court (the “Court”), affirmed the enforceability of patent restrictive covenants (so-called “no-challenge clauses”) in settlement agreements.

In 2014, Loops L.L.C. and Loops Flexbrush L.L.C. (“Loops”) and Maxill Inc. (“Maxill”) entered into a settlement agreement to resolve a patent infringement action by Loops against Maxill. The agreement, governed by the laws of Canada and Ontario, contained a no-challenge clause in which Maxill agreed “not to directly or indirectly assist any person in attacking the validity” of certain Loops patents.[2] Loops subsequently commenced actions in Ontario and Utah claiming Maxill breached the agreement and infringed a U.S. patent covered by the agreement.[3] Loops filed a motion for an interlocutory injunction in the Ontario action. The motion judge dismissed the injunction request.[4] The motion judge found that a strong prima facie case was lacking because Loops’ evidence was rebutted by the fact that the no-challenge clause was not reasonable in the public interest, based on U.S. caselaw principles.[5]

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CIPO Fees to Increase After January 1, 2021

The Canadian Intellectual Property Office (“CIPO”) has announced that many of its fees for Canadian trademarks, patents, industrial designs, and integrated circuit topographies will increase on January 1, 2021. Among the fees being increased by 2% are those for an application to register a trademark as well as examination of patent and industrial design applications. A full list of the adjusted fees can be found in the links above or on the CIPO website.

The CIPO website should be consulted for an up-to-date listing of the adjusted fees because the applicable Tariff of Fees in the Patent Rules may not yet be updated. Whether the current fee or the adjusted fee must be paid for a given service will depend on the date on which the fee is received by CIPO, not the date on which the service is requested.

Fasken’s team of experienced intellectual property lawyers, patent agents, and trademark agents would be pleased to assist you with any and all CIPO matters.

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Canada Announces Accelerated Exam for Pandemic Related Inventions Filed by “Small Entities”

On July  7th, 2020, the Canadian Intellectual Property Office (“CIPO”) announced a pilot project allowing applicants who qualify as “small entities” (e.g. universities, or businesses employing 50 or fewer employees) to expedite the examination of their patent applications for COVID-19-related inventions. Details of the program can be found on the CIPO website here. The program is limited, however, to only fifty (50) patent applications.

As businesses work to address the COVID-19 pandemic, this pilot project is designed to help smaller sized entities get products to market as soon as possible. To request accelerated examination under the program, applicants must include a statement that the technology is medical and related to COVID-19 and that an approval for its use has been obtained from or has been submitted to Health Canada.  Applicants must also have requested examination and paid the applicable Canadian government fee for requesting examination. Finally, the application must be open to public inspection or the applicant must have submitted a request for early publication. There is no additional fees to use this process.

For further information on whether you qualify and how to take advantage of this program or any other program at CIPO, please reach out to one of the patent professionals at Fasken.

Fasken’s IP group continues to take steps to ensure continuity of our services to our clients during the pandemic. As CIPO’s online solutions are available 24/7 and from anywhere, we are available to continue to assist our clients during this period. Please don’t hesitate to reach out, should you need assistance with your intellectual property.

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