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You’ve probably asked Siri lots of questions, like “what’s the weather outside?” or “how long do you cook a soft-boiled egg?” But what if Siri was a little more sophisticated? What if you could ask Siri to design something or to improve a process?

Imagine you were working on something, say an engine, and while building it you asked Siri, “how could I make this better?” Further, imagine Siri answered your question with an innovative solution.

Question: who is the inventor of that solution?  You or Siri?

You may scoff at this question and relegate it to the domain of science fiction. If so, you might be surprised by the fact that artificial intelligence (“AI”) is already in use in various fields to aid in the discovery of innovative solutions. For example, consider the role of AI in pharmaceutical drug discovery. As AI becomes more sophisticated, we will inevitably use it more and more to create new inventions, which will further prompt legal issues concerning the inventorship and ownership of any resulting patent.

Filing a patent application

To obtain a patent, you must file a patent application with the appropriate government agency. Then, if successful, the government grants you a patent for the invention. The patent application requires you to name the “inventor”. In Canada, this requirement is found in s. 54(1) of the Patent Rules, SOR/2019-251. Likewise, in the US, this requirement is found in 37 C.F.R. § 1.41.

Using our scenario above, let’s say you named Siri as the inventor in your patent application. What would happen? The answer may depend on where you file your patent application.

In Canada, the Patent Act does not define the term “inventor”. So hypothetically, it could be broad enough to include an AI. However, the Supreme Court of Canada has interpreted the term “inventor” as a “person or persons who conceived of the [invention]” (see Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77, at para 96). However, the Supreme Court in Apotex did not consider the possibility of a non-human inventor. Accordingly, one could argue that the Supreme Court did not intend to decide that an AI could not be named as an “inventor”. Consequently, the issue of AI inventors could still be considered a live issue in Canada.

In Australia, a recent Federal Court decision found that an AI can be an inventor (see Thaler v. Commissioner of Patents, [2021] FCA 879, at para 226). The court distinguished inventorship and ownership. It held that an AI was only capable of inventorship, but not ownership (in part because an AI is not a person and does not have legal capacity to own property). This is significant because the Australian patent legislative framework is similar to the Canadian legislative scheme. So perhaps there is room for a future Canadian case to accept AI inventors.

In contrast, the US side is quite clear: US patent law specifically defines an “inventor” as an “individual” (35 U.S.C. § 100(f)). A recent decision from the Eastern District of Virginia held that “Congress intended to limit the definition of ‘inventor’ to natural persons” (see Thaler v. Hirshfeld et al., No. 1:20-cv-903-LMB, *17 (E.D.Va. September 2, 2021). Accordingly, there likely will not be movement in the US without Congress stepping in and redefining the term “inventor.”

Obviously, whether you could name Siri as the inventor in the above scenario hinges on the jurisdiction you’re applying in. However, if Siri is the inventor, who owns the patent? You, Siri, or the owner of Siri?

Ownership of the patent

This is where the use of AI in patent applications gets complicated. Say you developed Siri, Siri developed the invention, and you were filing the patent application in a jurisdiction that allowed Siri to be named as an inventor. Fantastic: Siri is the inventor and you are the owner of the patent—the patent holder, because you own Siri.

However, things become more complicated when other parties are involved. For example, let’s say Siri is owned by Apple, and Apple licensed Siri to you. Does Apple own whatever Siri says? The answer may depend on the terms of the software licensing agreement between you and Apple and what that agreement says about IP ownership.

It has long been a best practice to clearly address issues of IP ownership in the terms of contracts such as master service agreements, software as a service agreements (SaaS), employment agreements, independent contractor agreements / professional services agreements, and other relevant agreements. Because AIs are not capable of entering into contracts, or holding or conveying property, it will be important to understand all of the parties involved and ensure they have expressly agreed to transfer any and all rights they may have in inventions generated by the AI. This is particularly important where jurisdictional legal differences may initially vest these rights in different people.

If you have questions about or need any assistance with respect to this topic, please reach out to any member of Siskinds’ Business Law Group for advice and direction. You can also reach out to the authors: Jaime Holroyd, a Patent Lawyer who is a registered Canadian and US Patent Agent, at [email protected]; and Savvas Daginis, a Canadian and American Business Lawyer focusing on technology transactions and privacy, at [email protected].

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