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| Anthony Dearden |
The commissioner, concurring with the Patent Appeal Board’s recommendation to refuse the application, concluded that only natural persons can be inventors under Canadian patent law. This decision is not likely to come as a surprise to the patent community at large, as it aligns Canada’s position on AI inventorship with those taken by other patent offices where Thaler has filed corresponding applications. Nevertheless, some may view the
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Background
Thaler filed the Canadian application via the Patent Cooperation Treaty in 2019. DABUS was credited as the sole inventor. The issue the Canadian Intellectual Property Office (CIPO) faced was not whether the invention itself was patentable, but whether an AI model or system could legally be recognized as an inventor.
CIPO first objected in 2021, pointing out that, under subsection 27(2) of the Patent Act and subsection 54(1) of the Patent Rules, a patent must be filed by an “inventor” or the “inventor’s legal representative.” This question was referred by the commissioner to the Patent Appeal Board, which reasoned that, since DABUS was not a legal person and the right to apply for a patent “cannot be validly transferred from the inventor,” the application was non-compliant. While Thaler claimed that he was DABUS’s legal representative under the principle of ownership derived from “accession” under Roman law, the board remained unconvinced.
Defining “inventor” under Canadian law
As the central question was whether “inventor” in the Patent Act and Patent Rules could be understood to include a non-natural entity such as a machine learning model like DABUS, the board reviewed dictionary definitions, statutory interpretation principles and case law. In this context, the board considered that there was no evidence to support the view that the term “inventor” had evolved to such an extent as to include non-natural persons or AI systems. This view, the board claimed, was supported by the case law, such Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77 and Sarnoff Corp. v. Canada (Attorney General), 2008 FC 712. In Sarnoff, it was stated that, “In Canada, the language of the jurisprudence assumes that an ‘inventor’ is a natural person as opposed to a juridical person such as a corporation.”
The board also argued that the statutory context reinforced this view. For example, the board pointed to the fact that a number of provisions of the Patent Act link inventors with natural persons, such as s. 31, which refers to “his whereabouts,” or s. 20 dealing with the rights of Crown officers where such individuals are described as a “person.” Added to this is the requirement in s. 54 of the Patent Rules to provide “the name and postal address of each inventor,” which the board argued presupposed a human being. Thus, the board concluded that “inventor,” under Canadian law, is limited to natural persons.
Thaler’s submissions argued for a more flexible interpretation that sought to recognize the natural evolution of meanings attached to words. In particular, Thaler pointed to the fact that courts have historically extended legislation to cover new technologies not in existence at the time of enactment, such as applying the Telegraph Act to telephones. His argument was that, by analogy, the term “inventor” had evolved to include AI systems.
Thaler further argued that permitting the granting of patents naming AI systems as inventors was important to ensure the ongoing quid pro quo of the patent system. He argued in particular that, if AI-generated inventions could not be patented, valuable innovations may be withheld from disclosure, and denial of inventorship could discourage future investment in AI. As DABUS’s owner, Thaler additionally claimed that he should be entitled to the rights of whatever DABUS produced.
The commissioner ultimately sided with the board and refused the application for two reasons, both on the basis that the term “inventor,” as used in the Patent Act and Patent Rules, is limited to natural persons.
1. Since DABUS is an AI system and not a natural person, “the application cannot be filed by ‘the inventor or the inventor’s legal representative’ as required by subsection 27(2) of the Patent Act.”
2. A valid “inventor” cannot be identified according to the requirements of subsection 54(1) of the Patent Rules.
2. A valid “inventor” cannot be identified according to the requirements of subsection 54(1) of the Patent Rules.
The commissioner emphasized that allowing AI inventorship would represent “a radical departure” from its intended meaning in the Patent Act and Patent Rules. The decision is currently open to appeal.
As noted above, this ruling places Canada in line with other major jurisdictions. Courts in the United Kingdom, United States, New Zealand, as well as the European Patent Office, have also rejected Thaler’s patent applications naming DABUS as the inventor, insisting that only human inventors qualify. While Australia’s Federal Court initially sided with Thaler, the decision was later overturned on appeal. An outlier is South Africa, which granted a patent naming DABUS as inventor following a formalities examination.
These decisions underscore a broader policy question: how should intellectual property legislation and jurisprudence adapt to the growing role of AI in innovation? And how should companies and innovators navigate inventorship where an AI model was used as part of the IP-creation process, as is more and more often the case?
While the refusal of Thaler’s DABUS application by CIPO preserves continuity with the existing patent systems in other jurisdictions, it does little to answer the growing questions about how to balance legal tradition with technological change. As artificial intelligence continues to push the boundaries of creativity, Canada and other nations will face increasing pressure to decide whether the concept of an “inventor” should evolve in response.
Anthony Dearden is a Canadian patent agent and European patent attorney at Gowling WLG in Vancouver, focusing on drafting and prosecuting patent applications for high-tech and AI-related innovations.
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