Can AI Technology Create a Patent in Canada? A Look at Global Precedents

Can AI Technology Create a Patent in Canada? A Look at Global Precedents

Shawn Dhue is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.


In light of the recent court decision of Thaler v Hirshfeld et al. [Apotex], I have decided to look at precedents from around the world where courts have contemplated recognizing artificial intelligence (AI) technology as an “inventor.” As will follow, Canada addressed this matter in Apotex Inc v Wellcome Foundation. However, this 2002 decision did not define whether AI technology can be an inventor. A lot has changed over the past nineteen years, and Judge Leonie Brinkema in Thaler gave some insight into what the future could look like for AI “inventors.”

United States: Thaler v Hirshfeld et al

On September 3, 2021, the United States District Court for the Eastern District of Virginia, lead by Judge Brinkema, ruled on the appeal made by Stephen Thaler. Thaler and his colleague, Ryan Abbott, created an AI creativity machine called Device for the Autonomous Bootstrapping of Unified Sentience (DABUS). The two creators listed DABUS as the inventor on two applications for patents for the inventions of a light beacon and a food container. In April 2020, the US patent office rejected the applications, stating that an inventor must be a human, not a robot:

Therefore, interpreting “inventor” broadly to encompass machines would contradict the plain reading of the patent states that refer to persons and individuals.”

Thaler replied that listing himself as the inventor rather than DABUS would be “falsely claiming credit.”

On appeal, Judge Brinkema agreed that Thaler and Abbott could not list DABUS as the inventor on a patent. Judge Brinkema states:

“Congrss intended to limit the definition of ‘inventor’ to natural persons. As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship. But that time has not yet arrived…”

This decision leaves the matter open to a future of possibility, giving a precedent that is easily changeable.

Australia: Thaler v Commissioner of Patents [2021] FCA 879

In February 2021, Thaler filed an application for the same patent in Australia. Johnathan Beach J of the Federal Court of Australia ruled that “the name of the inventor can be a non-human.” Continuing, Beach J explains that “an inventor as recognised under the [Patents Act 1990] can be an artificial intelligence system or device. But such a non-human inventor can neither be an applicant for a patent nor a grantee of a patent.” This decision was a historic ruling in Australia. The Commissions’ Office says they will appeal the decision.

United Kingdom: Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat)

In September 2020, a UK judge dismissed Thaler’s appeal to the decision rejecting his applications. The judge stated that DABUS is not the inventor and cannot be the inventor. Justice Marcus Smith explained his reasoning by saying that the meaning of the word “inventor” is limited to people under UK patent law.

Canada: Apotex Inc v Wellcome Foundation Ltd [2002] 4 SCR 153

As mentioned, Apotex was the most recent Supreme Court of Canada decision that spoke to humans being inventors for patent applications. However, this decision did not directly speak to the question of whether AI technology could be encompassed under the definition of “inventor.” Binnie J, for the Court, stated that “[the Court] infer[s] that the inventor is the person or persons who conceived of the “new and useful” art, process, machine, manufacture or composition of matter, or any “new and useful” improvement thereto” [emphasis added].

With that said, by way of Judge Brinkema’s comments and the precedents of the Federal Court of Australia, I believe there is a strong argument for allowing AI technology to be considered an inventor. Canada classifying AI technology as inventors would create a strong push for new AI technology. Canada’s patent law is not currently prepared to deal with such a progression; however, as technology advances, amendments are likely to follow.