On February 26, 2025, the Patent Appel Board was scheduled to hear submissions whether Canadian Patent Application No. 3,137,161 can comply with the formalities of the Patent Act and Rules. This 161 Application purports to be "invented" by the generative artificial intelligence Device for Autonomous Bootstrapping of Unified Sentience (DABUS) and to be "owned" by Dr. Stephen Thaler.
Dr. Thaler is a computer scientist who has pursued intellectual property protection all around the world for inventions and works generated by his machines. Examples include the artistic work "A Recent Entrance to Paradise", created by Dr. Thaler's "Creativity Machine", discussed in our blog post here.
DABUS itself has been denied inventorship for patent applications in at least the UK, US, and Australia over the past few years.
DABUS will have its debut decision in Canada when the Commissioner of Patents decides to refuse or consider the 161 Application.
Background
The Commissioner initially found that the 161 Application did not satisfy subsection 27(2) of the Patent Act and section 54 of the Patent Rules, which require a patent application to be filed by an inventor or the legal representative of an inventor, that the inventor be identified and that the applicant file a statement of entitlement.
Dr. Thaler disagreed and argued:
- DABUS was the inventor, and Dr. Thaler owned the DABUS, so he owned "the fruits" of DABUS through the "ancient principle of accession";
- Dr. Thaler was entitled to apply for a patent because he was the owner of DABUS's invention, similar to a corporation who applies for an invention produced by its employee; and
- Policy considerations, including the patent bargain, weighed in favour of allowing the application. In his view, refusing a patent application simply because the inventor is an artificial intelligence "clearly cuts against the basic policy rationale underlying the Patent Act."
Dr. Thaler further noted that naming a human creator as the inventor where an artificial intelligence was in fact the inventor "may result in invalidation of the patent under subsection 53(1) of the Patent Act, as well as facing the possibility of fines and imprisonment under section 76 of the Patent Act."
To address these submissions, the Commissioner referred the matter to the PAB.
PAB Preliminary Decision
The PAB's preliminary decision, released November 28, 2024, suggests that Canada will follow suit and find that an "inventor" under the Patent Act must be a natural person or persons and does not include an AI system.
The term "inventor" is not defined in either the Patent Act or Rules. The PAB was therefore required to interpret this term in a manner consistent with the "modern principle" of statutory interpretation. Moreover, since section 54 of the Patent Rules was at issue, the scope of the regulation was constrained by its enabling statute.
The PAB found that the grammatical and ordinary sense of "inventor" connoted a person rather than an AI system such as DABUS. It relied on dictionary definitions that referred to "a person" or "one".
It then considered the context surrounding "inventor" in the Patent Act and Patent Rules. The PAB again found that this term connotes a natural person, rather than a legal person or an AI system such as DABUS.
For example, the PAB referred to section 7 of the Patent Act, which prevents employees of the Patent Office from dealing in patents unless they are an original inventor or they acquire patent rights "under the last will, or by the intestacy, of a deceased person." It found that "an officer or employee of the Patent Office" was a natural person in each of these contexts.
As "[a] term used in a piece of legislation is generally taken to have the same meaning throughout the legislation," the PAB found that the connotation of "inventor" being a natural person should be attributed to the term in general.
The PAB also referred to subsection 54(1) of the Patent Rules, which requires an application to indicate the name and postal address of each inventor. In the PAB's view, "it is difficult to imagine that those who drafted the Patent Rules contemplated the name and postal address requirements as applying to an artificial intelligence system."
The PAB referred to further examples in the Patent Act that included "a clear link [...] between a person and an inventor" and found "a clear inference that patent rights were intended to be awarded to, and transferred between, natural or legal persons."
With respect to the object and scheme of the Patent Act, the PAB emphasized the Supreme Court's comment in Harvard Mouse that "a product of human ingenuity must fall within the terms of the Patent Act in order for it to be patentable." It further noted that the goal of incentivising innovation would not seem to apply to an innovator that is an AI system. Therefore, in its preliminary view, "the accepted objects and scheme of the patent system do not fit with the idea of an artificial intelligence system being an inventor."
The PAB also reviewed case law discussing the term "inventor" that found "juridical or legal persons under subsection 35(1) of the Interpretations Act[...], such as corporations, cannot be named as an inventor" because an "inventor is assumed to be limited to comprising natural persons." This finding reinforced its preliminary impression of "inventor", as discussed above.
Finally, the PAB addressed Dr. Thaler's initial submissions:
- With respect to "ownership by accession," the PAB found that this principle did not apply to intangible property and referred to the UK Supreme Court's decision on this same argument by Dr. Thaler;
- As a result, the PAB found Dr. Thaler could not claim ownership over the invention by DABUS. Dr. Thaler's assertion that DABUS was his employee was also inconsistent with claiming DABUS was his property; and
- It found that Dr. Thaler's policy considerations could not serve as a basis for its decision, which was grounded on an interpretation of "inventor" as contemplated by the legislation, the associated regulations, and relevant case law. The PAB declined to address Dr. Thaler's assertion that naming a human inventor would be a false representation.
Overall, the PAB's preliminary view was that the 161 Application could not comply with subsection 27(2) of the Patent Act and subsection 54(1) of the Patent Rules because DABUS was an AI system and cannot be listed as an inventor on a patent application.
Dr. Thaler made additional written submissions on February 19, 2025.
A copy of the PAB's preliminary decision can be found here, and Dr. Thaler's initial submissions can be found here.
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