Inventor or DABUS-t?
According to the Commissioner of Patents, an AI system cannot be an “inventor” under the Canadian Patent Act and Rules, and therefore Canadian Patent Application No. 3,137,161 has been refused before any examination could take place. As of the date of this post, no appeal has been filed.
This decision finalizes the Preliminary Review from the Patent Appeal Board discussed in our earlier post here. This post will focus on the additional reasons provided by the PAB in the final decision, which was adopted by the Commissioner.
On the text of the Patent Act and Rules, the PAB considered Dr. Thaler’s new argument that the word “calculator” had been used to describe humans (e.g. the women who worked on the early US space program), and therefore, the word “inventor” could also refer to either a human or a machine. However, the PAB found no evidence that “inventor” could encompass both meanings.
On context, the PAB considered Dr. Thaler’s new argument that nothing in the Patent Act or Rules prohibited designating an AI system as an inventor. It agreed that there was no exclusion but held that silence in the legislation did not imply an unrestricted authority as to who or what can be named an inventor.
On the object and scheme of the Patent Act, Dr. Thaler cited cases that supported a “dynamic approach” to statutory interpretation wherein “the meaning ascribed to legislation must evolve over time in response to evolving social and material realities”. The PAB distinguished these cases and found that interpreting the term “inventor” to include an AI system would not be a “technological evolution”. Legislators did not contemplate that an “inventor” would be a piece of technology, and such a change would be drastic in comparison to the cases cited.
Dr. Thaler also cited cases that described the purpose of the patent system and the meaning of the word “inventor”. The PAB agreed that Canadian Courts make it clear that the patent system is to be applied in a way that encourages and recognizes advances in science and technology. However, the PAB emphasized that the patent system has limits on what may fall within its purview, for example, because higher life forms and methods of medical treatment are not patentable.
In the PAB’s view, Canadian Courts have not indicated any intention to interpret “inventor”to include a non-natural person or an entity such as DABUS and have instead taken the term to be limited to natural person(s).
Next, the PAB again addressed the principle of accession and Dr. Thaler’s assertion that he was the owner of DABUS’s invention as the owner of DABUS. At the oral hearing, Dr. Thaler cited cases recognizing goodwill as an intangible asset that had been generated by a non-human (a corporation) and pointed to the example of bitcoin currency as a valuable asset generated by mining equipment.
First, the PAB noted that bitcoin mining equipment does not produce bitcoin, but rather bitcoin is issued by the bitcoin network software for services rendered with the mining equipment.
Second, the PAB found that none of Dr. Thaler’s cases spoke to a piece of property producing an intangible asset and to whom or what the rights to that intangible asset may ultimately flow. The cases, therefore, did not support expansion of the principle of accession to the production of an intangible asset and the ownership of that asset flowing back to the owner of the piece of property.
It reiterated that Dr. Thaler could not be a valid legal representative because there was no valid inventor under the Patent Act and Rules.
The PAB also noted that Dr. Thaler’s position would mean that an inventor could be a piece of property, which does not align with the Patent Act and Rules.
Similarly, DABUS’s invention could not be a work-for-hire that could be assigned, because there is no originating inventor to assign the work.
Finally, the PAB addressed Dr. Thaler’s policy arguments about the consequences of failing to recognize AI as an inventor and protect AI-generated inventions. For example. Dr. Thaler pointed to the use of AI systems in drug development and the associated cost and argued that preventing AI from being an inventor may discourage the use of AI to develop pharmaceuticals. Despite Dr. Thaler’s assertions, the PAB found a healthy use of AI tools in the pharmaceutical domain and no apparent barriers to innovation or use of the patent system.
The PAB therefore recommended that the 161 Application be refused, and the Commissioner concurred. A copy of the Commissioner’s Decision can be found here.
