Canada: Inventorship In The Age Of AI

Last Updated: September 27 2018
Article by Stephen Beney and Reshika Dhir

Advances in Artificial Intelligence (AI) technologies are revolutionizing a range of industries and enabling a variety of new scientific discoveries. Various platforms, such as IBM Watson, Microsoft Azure, Amazon Web Services (AWS), to name a few, are making AI and machine learning accessible to a much wider audience than ever before. As with any new technology, the advent of AI is not without its legal complications.

With the widespread adoption of AI technologies, AI-generated inventions are becoming commonplace. The spectrum of AI-generated inventions includes everything from use of AI as a mere tool by a human to AI generating solutions to technical problems and objectives defined by humans to, one day, existence of a truly autonomous AI that generates inventions. The rather speculative end of the spectrum with ‘full artificial intelligence’ has drawn some criticism and cautionary warnings in the AI community.1

Nevertheless, the pervasive use of AI has given rise to a very interesting legal question of who should be considered the true inventor(s) of AI-generated inventions.  

Section 27 of the Canadian Patent Act provides that “the Commissioner shall grant a patent for an invention to the inventor or the inventor’s legal representative if an application for the patent in Canada is filed in accordance with this Act and all other requirements for the issuance of a patent under this Act are met”.2 While the phrase “legal representative” has been defined in the Patent Act to include “heirs, executors, administrators …, liquidators …, guardians, curators, tutors, transferees and all other persons claiming through applicants …”,3 the term ‘inventor’ is not defined in the statute.

The guidance provided by the Canadian courts on the definition of ‘inventor’ relates to the amount of contribution required to be a named inventor or co-inventor on a patent application. In this regard, the courts provide that i) conception of the inventive idea, and ii) reduction to a definite and practical shape are the minimum requirements for inventorship.4

The question of inventorship is one that must be carefully addressed. Inventorship is a source of entitlement to the patent rights granted by the Patent Act. The entitlement to the patent rights further informs the rights to commercially exploit the invention falling within the claims of the patent. The patent rights, once allocated based on inventorship, can be subsequently transferred, assigned or licensed to others. However, inventorship cannot be contractually altered. The significance of correct determination of inventorship is also reflected in section 53(1) of the Patent Act, which provides that wilful omission of the names of the inventor(s) on a patent application, with the purpose of misleading, may be ground for patent invalidity.5

The question of whether AI that meets the ‘conception’ and ‘reduction to practice’ requirements of inventorship should be listed as an inventor or a co-inventor on a patent application remains to be addressed by Canadian jurisprudence. However, some known examples of AI generated inventions indicate that the human owners of such machines can be the exclusive inventors on corresponding patents.     

One example of an AI generated invention is protected by U.S. Patent No. 5,852,815 (“US ‘815”), titled “Neural Network Based Prototyping System and Method”. The invention claimed in US ‘815 was generated by ‘Creativity Machine’, developed by Dr. Stephen L. Thaler.6 Dr. Thaler has claimed that the Creativity Machine mimics the human brain using two artificial neuron networks, and is accordingly capable of producing creative outputs to new scenarios without additional human input. The Creativity Machine has been used to compose music, design vehicles, improve surveillance etc. Another example includes U.S. Patent No. 6,847,851 (“US ‘851”), titled “Apparatus for Improved General-Purpose PID and non-PID Controllers”. The invention claimed in US ‘851 was generated by ‘Invention Machine’, developed by Dr. John Koza.7 Similar to the ‘Creativity Machine’, the ‘Invention Machine’ has also contributed to the field of science and technology by creating antennae, circuits, lenses etc. In both of these cases, the AI used to generate the claimed inventions were not listed as an inventor or a co-inventor on the patents. Instead, the inventors identified in the patent applications were the human developers of these machines.

A wide range of human and AI collaborations can exist in the realm of AI-generated inventions. The humans may be involved in creating the AI platforms (such as the research team involved in creating the IBM Watson). A same or a different group of humans may be involved in training the AI models (such as millions of people training the Google reCAPTCHA system). Once the AI is trained, a different group of humans may be involved in using the AI for one or more applications. Further, the AI-generated invention may be used as a component in a different invention invented by yet another group of humans. It can be appreciated that the existence of so many different players can complicate the determination of inventorship.

The problem is further compounded based on the roles played by the humans in the human-AI collaborations. If the human only defines the objective or the problem to be solved by the AI, and the AI generates the solution to the problem, presumably the human meets the ‘conception’ requirement but not the ‘reduction to practice’ requirement of inventorship. What if the human additionally identifies and specifies the parameters of the invention, and identifies the best of the many solutions generated by AI?

On the other hand, if the AI, trained in one field or developed for one purpose, autonomously generates an invention in an unforeseen manner or in an unrelated field, does the human even meet the ‘conception’ requirement of inventorship? To put it another way, has the AI now identified a problem, and then conceived of an inventive idea, and reduced it to a definite and practical shape? Who, then, can claim (and deserves) to be the true inventor(s) of the invention?

At this time, no clear guidance on this topic appears in law or policy. In particular, there does not appear to be any Canadian case law regarding determination of inventorship in the context of AI-generated inventions. However, since AI is constantly evolving and catalyzing innovation, such issues are inevitable. We will continue to monitor how the Canadian patent office, courts and legislature attempt to fill this statutory gap. 


1 Stephen Hawking - will AI kill or save humankind?, BBC News, (last visited September 21, 2018); Artificial Intelligence Is Our Future. But Will It Save Or Destroy Humanity?, Futurism, (last visited September 21, 2018).

2 Patent Act, RSC 1985, c P-4, s 27(1).

3 Patent Act, RSC 1985, c P-4, s 2.

4 Fox on the Canadian Law of Patents, 5th Edition, 2018, Chapter 2.11.

5 Patent Act, RSC 1985, c P-4, s 53(1).

6 What is the Ultimate Idea?, Imagination Engines Inc., (last visited September 21, 2018).

7 John R. Koza et al., Evolving Inventions, SCI. AM., Feb. 2003, at p. 52.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Stephen Beney
Reshika Dhir
Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions