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Prof. Pina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. This article features contributions from Ryan Wong (IP Osgoode & IP Innovation Clinic Alumnus), Sabrina Macklai (IPilogue Senior Editor), Tianchu Gao (IPilogue Writer), and Ashley Moniz (IPilogue Managing Editor).

2021 was an exciting year for the IPilogue. Our hard-working students and community members published more than twice as many articles than in 2020 and the most articles in a calendar year since 2011. This sharp increase helped us stay up to date with some of the biggest topics shaking up intellectual property: from , to ; and from growing investments in and , to IP registrars around the world grappling with whether to acknowledge Ìęas an inventor or artist. This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. For a review of Privacy legislation in Canada, check out .

Top 10 Most Read IPilogue Articles Published in 2021

1. by Sabrina Macklai & Emily Chow
2. by Prof. David Vaver
3. by Claire Wortsman
4. By Claire Wortsman
5. by Natalie Bravo
6. by Prof. Giuseppina D’Agostino
7. by Bonnie Hassanzadeh
8. By Meena Alnajar
9. by Prof. David Vaver
10. by Bonnie Hassanzadeh

Introducing the College of Patent Agents & Trademark Agents

On , the came into force. The Act established the (‘’), an independent public interest regulator of patent and trademark agents in Canada. The purpose of the College is “to enhance the public’s ability to secure the rights provided under the and the .” The College’s responsibilities include maintaining professional competencies and ethics, issuing licences, collecting fees, and administering certification exams. This development marks a key milestone for the profession and for Canada’s . Though still in its infancy, the College has been criticized for and its , which may impose an additional fee on lawyer agents. It remains to be seen how influential the College is on the profession as it is expected to be fully operational within the next two years.

Patents

Overbreadth as an Independent Ground of Invalidity

On July 28, 2021, the Federal Court of Appeal confirmed overbreadth as a standalone attack on patent validity: . In this case, the appellants argued that there is no statutory basis for overbreadth as a ground for invalidity. The Federal Court of Appeal disagreed and found that overbreadth can be supported by a combination of sections 27(3) and 27(4) of the Patent Act. Case law has often overlapped overbreadth with other grounds of invalidity such as obviousness, anticipation, and inutility.Ìę

First Time Interpreting Patent Agent Privilege

Similar to solicitor-client privilege, patent agent privilege was introduced by section 16.1 of the Patent Act on June 24, 2016. The first case on patent agent privilege was decided this year: In this decision, the Federal Court provided some helpful commentary and analysis on the application and limitations of patent agent privilege.Ìę

Patent Prosecution History Now Admissible as Evidence

In 2018, section 53.1 of the Patent Act was added to make patent prosecution history admissible as evidence in patent proceedings. This was a significant development as the Supreme Court of Canada had expressly rejected the idea and stated that admitting patent prosecution history “would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation” (Free World Trust v Électro SantĂ© Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .Ìę

Continued Debates over AI as an Inventor

Around the world, patent registrars grappled with patent applications that credit artificial intelligence software as the inventor. Dr. Stephen Thaler’s “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience) applied for patents around the world for its interlocking food containers. DABUS was granted patents in Australia and South Africa, with . In line with the and the , the disagreed, stating that absent express intention from Congress, the term “individual” in their statutory definition of “inventor” . The Supreme Court of Canada last considered the definition of "inventor" in 2002, but has yet to consider whether it would include non-human entities.

Trademark Law

Parody in Trademarks is No Joke

In , the Federal Court reaffirmed that parody is not a defence against trademark violation. Unlike the 2020 decision ), where the Federal Court failed to find the marks confusing, Justice McHaffie held there was a likelihood of confusion and passing off. This was based partly on the similarity of the trademarks and the overlap of the goods (both offering baked goods). However, even if the nature of the parties’ trades differ, trademark owners may still find recourse against spoofed versions of their marks through claiming depreciation of goodwill under section 22 of the . Here, the Court found goodwill in Subway’s trademarks, which was damaged by the nature of Budway’s products, as contrary to Subway’s “healthy and active” lifestyle promotion. With damages amounting to $40,000, it is clear the courts are unamused by parody in trademarks.

The Road Less Travelled Cannot be Trademarked

Like most countries, Canada bars the registration of “clearly descriptive” trademarks to prevent applicants from monopolizing words that merely describe the goods or services at hand. For this reason, marks consisting of are typically unregistrable. In , the Federal Court clarified when such marks might be protected. Hidden Bench and Locust Lane are two wineries operating on the same little road, “Locust Lane”. Although the Federal Court agreed that Hidden Bench met the threshold for a valid common law trademark over “Locust Lane”, they ultimately held that the mark, as clearly describing the goods and services’ place of origin, lacked both inherent and acquired distinctiveness. Therefore, Hidden Bench could not establish the necessary goodwill for a passing off claim. Only descriptive marks that have acquired a “secondary meaning” through use may warrant protection.

CIPO Addresses the Application Backlog

While filing trademarks is important for brand protection, the examination stage can take . In May, the Canadian Intellectual Property Office (CIPO) new measures to address the application backlog. Trademark owners may now file requests to expedite their examination where the registration of their mark is necessary for special circumstances such as if a Canadian court action involving the mark is expected or underway or if the goods or services are aimed at preventing, diagnosing, treating, or curing COVID-19. If accepted, the examination will take place within two weeks. The examination is also automatically expedited by approximately 6-10 months when the goods and services in the application are listed in CIPO’s . Though it is too early to assess the effect of these changes on mitigating the “”, the backlog of CIPO’s unexamined trademark applications appears to have as of December 13, 2021.

Push to Register Non-French Trademarks for Use in Quebec

Among the controversies associated with Quebec’s proposed Bill 96, , the bill stipulates new requirements for trademark owners operating in Quebec. Currently, under Quebec’s French-language laws, both registered and unregistered (i.e., common law) trademarks recognized under the may appear on public signs, posters, and commercial advertising in Quebec, in languages exclusively other than French. If enacted, Bill 96 would permit only registered non-French trademarks to appear on public signage, provided there is no corresponding registered French version of the mark. The Coalition Avenir Quebec government tabled Bill 96 on May 13, 2021, and Quebec’s National Assembly last examined it on December 10. Some iteration of the bill will likely become law by the end of this year. But even if it fails to pass, businesses relying on common law trademarks would be wise to try to register them, given the many that registration provides.Ìę

Copyright Law

In 2021, the Federal Court and Federal Court of Appeal heard 57 copyright infringement proceedings, approximately of all IP-related litigations at these levels.

Developments in Fair Dealing

The Copyright Act’s section 29 fair dealing provision, which allows for certain uses of copyright-protected materials, remained a central issue. affirmed that fair dealing for the purpose of news reporting (section 29.2 of the Act) must provide attribution, mentioning both the source and the name of the author. An indirect reference to the author accessible through “minimum research” is insufficient. As such, the Federal Court of Appeal rejected Trend Hunter’s argument that hyperlinking to the source article where Stross was credited was sufficient to meet the second requirement. The Court also declined to find fair dealing under s. 29 more broadly, considering that Trend Hunter’s dealing was commercial in nature, reproduced Stross’ work in its entirety, and that alternatives were available.

Fair dealing was once again at issue in , where the Federal Court held that the Conservative Party’s use of the CBC’s news footage of Liberal Party Leader and Prime Minister Justin Trudeau during their 2019 election campaign did not infringe CBC’s copyright. The court undertook a large and liberal interpretation of fair dealing, finding that the Conservative Party’s use of CBC footage was for the purpose of criticism under s. 29.1.

żìČ„ÊÓÆ” achieved a in the copyright tariff dispute with the Canadian Copyright Licensing Agency (“Access Copyright”) in In a unanimous decision, the Supreme Court ruled that the interim tariff approved by the Copyright Board is not mandatory. Users can choose whether to accept licences or pursue alternative methods to lawfully copy works. Notably, this marked Justice Rosalie Abella’s final decision before her retirement from the Supreme Court of Canada. Throughout her tenure, and her judgement here provided helpful obiter regarding fair dealing as integral to users’ rights.

Even Fake Facts are Not Copyrightable

involves the alleged copyright infringement of the famous true-crime story The Black Donnellys. The book had always been presented and accepted as “.” The Federal Court ruled that “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts.” Given today’s popularity of the phrase “based on a true story”, this ruling is a that there is no copyright in facts, even if they are later found to be untrue.

Copyright in Evolving Content Transmission

In , the Federal Court found the defendant liable for copyright infringement in its provision of pre-loaded set-top boxes and internet protocol television (IPTV) services and awarded the plaintiff nearly $30 million in damages. These services made copyrighted works owned by the plaintiff available to the public without the plaintiff’s permission. This decision marks the first time The court dealt with a similar issue in ). As IPTV is growing increasingly popular across the globe, its poses a challenge in Canada.

Availability of Reverse Class Actions for Copyright Infringement Claims

The first of its kind in Canada, the Federal Court of Appeal in affirmed that reverse class actions may be pursued in connection with copyright infringement claims. Though the matter was sent back to the Federal Court for further consideration, this judgement may encourage and enable mass copyright enforcement in the future, especially in our digital age where copyright infringement is more commonplace.

Public Consultations Ahead of 2022’s Copyright Reform

As part of the (CUSMA), which came into force on July 1, 2020, Canada has until the end of 2022 to implement numerous changes to their domestic copyright laws; most notably, extending the general term of copyright protection from . In light of the upcoming legislative amendments, the Government of Canada hosted three public copyright consultations in 2021:

• ;
• ; and

With the consultations now closed, it will be interesting to see how Canadian copyright laws will change in 2022 to accord not only with international obligations but our ever evolving digital world and public attitudes surrounding copyright laws.

The post 2021 IP Year in Review appeared first on IPOsgoode.

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Emily Xiang is an IPilogue Writer, the President of the Intellectual Property Society of Osgoode, and a 2L JD Candidate at Osgoode Hall Law School.

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The emergence and rapid development of highly advanced technologies affects virtually every aspect of our day-to-day lives, and in the absence of more explicit legislative authority, the time has finally come for judiciaries to wrestle with the subject matter.

In July 2021, the Federal Court of Australia affirmed in that artificial intelligence (AI) systems may be deemed “inventors” under Australian patent law. Since this decision, numerous scholars have questioned the validity of the Court’s reasons, including researchers at the Max Planck Institute for Innovation and Competition. In their position statement entitled , Dr. Daria Kim, Dr. Josef Drexl, Dr. Reto M. Hilty, and Peter R. Slowinski expound on the evolving case-law in this subject area. They identify some of the assumptions made by the Federal Court of Australia regarding the technical capabilities of AI systems and question the potential consequences of attributing ownership rights to non-human entities in the absence of a more comprehensive analysis.

The principal question at hand is whether non-human entities, such as AI systems, should have legal capacity. Employing a social welfare perspective in their position statement, Kim et al. contend that, since patent protection imposes welfare costs, such a finding of entitlement to legal rights can only be justified by benefits that, in the absence of legal protection, would not occur. The authors also propose a number of counter-arguments against the reasoning of Beach J., found in paragraph 10 of the Thaler decision:

“First, an inventor is an agent noun; an agent can be a person or thing that invents. Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor. Third, nothing in the Act dictates the contrary conclusion.”

Firstly, Kim et al. argue that classifying “inventor” as an “agent noun” is insufficient to conclude that non-human entities can be considered inventors under patent law. Instead, highly advanced AI systems can only reasonably be thought of as “tools” that carefully adhere to algorithmic instructions and computational techniques in order to achieve certain ends, and such adherence should not be equated with the act of inventing. The Court fails to understand that, in most cases, AI systems require the application of meticulous adjustments and human decision-making.

In paragraph 126 of the Thaler decision, the Court notes that “machines have been autonomously or semi-autonomously generating patentable results for some time now”, and that by according AI the label of ‘inventor’, one is simply “recognizing the reality” of the state of the art. However, Kim et al. point out that it has not yet been proven that AI systems can act and invent “autonomously”, and that the Court in this case made an unfounded assumption. As one noted, “the current state of AI technology is not sufficiently advanced at this time and in the foreseeable future so as to completely exclude the role of a human inventor in the development of AI inventions”. Moreover, there is also the danger that such a finding regarding autonomous or semi-autonomous inventing on the part of AI might promote public misinformation about the current state of AI technology.

Kim et al. explain that the silence of Australian patent law (and other jurisdictional patent frameworks) on the subject of non-human inventors cannot be interpreted as implicit recognition, and that such an attribution could contribute to legal uncertainty. After all, it only invites further questions regarding how and when the Australian patent system must now recognize AI systems as having “autonomously” invented, as opposed to where AI techniques are being employed as mere tools to achieve a certain end.

Finally, Beach J. in paragraph 56 of the Thaler decision justifies the Court’s broader view of the concept of “inventor” by stating that to do otherwise would “inhibit innovation not just in the field of computer science but all other scientific fields which may benefit from the output of an [AI] system”. However, it is important to note that surges of patenting activity involving AI techniques and application have been occurring even in the absence of such recognition, and that taking patent protections away from human inventors may in fact disincentivize the filing of AI-related patent applications.

Legal frameworks globally remain ambivalent on the status of AI as inventors. For instance, the US District Court for the Eastern District of Virginia recently opined in that AI machines cannot be considered “inventors” under the US Patent Act. However, as cutting-edge technology continues to develop at alarming rates, courts around the world should expect to further engage with and clarify the law in this area.

The post “Artificial Intelligence Systems as Inventors?” – The Max Planck Institute on Machine Autonomy and AI Patent Rights appeared first on IPOsgoode.

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Emily Chow is anÌęIPilogueÌęWriter and a 1L JD Candidate at Osgoode Hall Law School.Ìę

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The (“NIHF”) has released its list of 2022 inductees, which notably includes two Black Female inventors for the . As the NIHF has never inducted Black woman before, I intend to provide some preliminary historical context, an overview of Black women’s contributions to STEM, and to gesture towards contemporary movements which aim to unpack the sociopolitical, economic, cultural, racist, and sexist underpinnings of STEM education and health inequity. Ìę

A cursory search of previous inductees led to unsurprising results. In 1973, the year of the NIHF’s inception, only was recognized. In 1991, became the first (white) female inductee, three years after she was awarded a Nobel Prize in Medicine alongside her male collaborators Ìę

Fast forward to the present: the late Patricia Bath and Google VP of Engineering Marian Croak, with over 205 US patents between them, join the ranks of over 600 NIHF inductees.

Patricia Bath’s reveals that she was the first Black woman physician to receive a medical patent, as well as the and the in America. Her invention, , a minimally invasive, low-risk cataract removal procedure, is still used today. Her career and numerous achievements, especially with the development of Community Ophthalmology—in response to that Black populations experienced disproportionately higher rates of visual impairment—collectively demonstrate her whole-hearted commitment to improving access to healthcare for Black, Hispanic, and other marginalized groups in America.Ìę

VP of Engineering at Google and creator-lead of Google’s , Marian Croak is being recognized for her work in —the digital codification of human voices and sound into data that can be transmitted through the internet. Given the ongoing pandemic and shift to remote office work and schooling, we owe much of our adaptive capacity to her hard-earned expertise. In 2012, she penned an open letter titled Dear Young Women in Technology, Welcome From a 30-year Veteran that discussed gender identity in a male-dominated field. She revisited gender stereotypes in a more recent , where she notes how critics doubted the feminized utility of “toy like technology” created by her team at Netscape. Now, she is proud to offer representation to people who can now “see someone that looks like themselves on some dimension.”

According to , NIHF designates and works with inductees with the intent to “infuse their stories, insights, and passion into our STEM education programs”, to ultimately provide “authentic, impactful experiences that help tomorrow’s innovators realize their potential.” As well-intended as this mandate is, its wording suggests that they aim to assimilate and co-opt Black, Indigenous, POC experiences, appropriating the transmission of knowledge and claiming the power to dispense and designate expertise. In effect, this process hinges on the ingenuity of racialized persons without providing the resources necessary to tell their own stories, facilitate their own workshops, and create opportunities to work directly with their own communities.

Furthermore, this mandate frames human potential as purely self-originating, rather than something fostered, supported, and/or uplifted. How then do non-traditional forms of knowledge, such as (especially oral histories and collective knowledge) fit within an individualized, colonial system? What inventions were who, being denied citizenship, were barred from filing their own patents? How can we best develop intersectional approaches to expand access to education and healthcare for racialized groups?

Rather than seeking a singular, normative answer, the following resources offer interested readers some starting points of engagement. Congratulations to all the 2022 inductees.

Further Reading

żìČ„ÊÓÆ”/Osgoode Hall Law School announces launch of Centre for Indigenous Knowledges and Languages (CIKL):

IPilogue Writer Emily Xiang writes about protecting culture in IP:

IP Osgoode’s IP Innovation Clinic Client intake information page:

The American Bar Association’s overview of “colorblind” patent systems and Black innovation:

Black Health Alliance, a charity working to address healthcare inequities for Black communities in Canada:

DMZ’s Black Innovation programs for entrepreneurs:

Black Innovation Capital, an investment fund that seeks to support Black founders and address barriers for minority communities:

Patent Racism, an episode from NPR’s Planet Money tracing histories of Black innovation:

Information about NIHF’s STEM programs:

The Assembly of First Nations’ discussion paper on Aboriginal knowledge and IP:

Canada’s Indigenous Intellectual Property Program grant:

The Canadian Government’s introductory materials to IP Rights and Indigenous Knowledge and Cultural Expressions in Canada:

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Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

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Emily Prieur is an IPilogue Writer and a 3L JD Candidate at Queen's University Faculty of Law.

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Artificial intelligence (AI) is everywhere. It influences the ways we socialize, work, and carry out our daily lives. Some even say we are in the . But while AI is creating new opportunities and innovations, the law has yet to catch up.

The latest decision from the United States, , comes off the heels of recent judgements in and asking if AI can be considered the inventor in patent law. This question has sparked widespread and within the legal community as legal frameworks struggle to adjust to AI. While South Africa and Australia answered in the affirmative, finding that AI passes the inventor test, the U.S. District Court for the Eastern District of Virginia disagrees.

These decisions can be traced back to a professor at the University of Surrey, Dr. Ryan Abbott. To advocate for AI to be granted inventorship rights, Abbott spearheaded the . Here, he filed patents for inventions generated by Dr. Stephen Thaler’s “DABUS”, an AI machine that was quite literally invented to invent. South Africa and Australia are just two of seventeen jurisdictions where Abbott and Thaler filed these patents in the hopes of granting inventorship rights for DABUS.

U.S. Rules Against AI as an Inventor

The United States Patent and Trademark Office (USPTO) originally denied Thaler & Abbot’s patent application in 2019, a decision which Thaler and Abbott described as “” The ruling was made on the basis that “no natural person is identified as an inventor.” USPTO supported this finding by citing cases like (“MČčłæ-±Ê±ôČčČÔłŠ°ì”) and (“Beech Aircraft”) where the Federal Circuit concluded that inventors could only be natural persons.

In the recent 2021 decision, Justice Leonie Brinkema found that the issue of whether AI can be an inventor turns on the plain meaning of the statutory term “individual.” This term is referenced explicitly in the U.S. and appears in the ’s definition of “inventor” to mean: “the individual, or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”

The U.S. Supreme Court previously conducted a statutory construction analysis of the term “individual” in (“MŽÇłóČčłŸ±đ»ć”). They ultimately concluded that the ordinary meaning of “individual” referred to a “natural person.” While Congress may intend a different meaning of the term, there must be at least “some indication” of their doing so. Although Mohamad interpreted Congress’ use of the term “individual” in the Torture Victim Protection Act, Justice Brinkema found that the Supreme Court’s analysis remains applicable as the Patent Act does not define the term individual and similarly uses the term as a noun. Therefore, she concluded that since AI is not a natural person, nor normally referred to as an individual, it cannot be an inventor under the Patent Act.

Justice Brinkema also referenced Max-Planck and Beech Aircraft to support her conclusion: “... the unequivocal statements from the Federal Circuit that “inventors must be natural persons” and “only natural persons can be inventors” support the plain meaning of “individual” in the Patent Act as referring only to a natural person and not to an artificial intelligence machine.”

Finally, Justice Brinkema rejected the notion that the court should be the arena to “encourage innovation” and “promote disclosure of information and commercialization of new technologies” through granting patents for AI-generated inventions. Such policy considerations do not override a statute’s plain language. Rather, incentives to create more artificial intelligence machines and other policy matters are problems for Congress to address.

The Future of AI as an Inventor

Abbott is at the and in the . In a comment for , he noted that “this decision would prohibit protection for AI-generated inventions and it diverges from the findings of the Federal Court of Australia.” Specifically, the found that while only a human or other legal person may be an “owner,” it is a fallacy to argue from this that an inventor may only be a human. In defining inventor, Justice Beach found that the court cannot merely resort to “old millennium usages of [the word inventor]” and must recognize the “evolving nature of patentable inventions and their creators.” As such, he found it possible that AI could be an inventor.

As AI grows more ubiquitous, governments will have to intervene and create new legislation that explicitly considers AI and other novel technologies. Otherwise, as noted by Justice Brinkema, courts may be left to make these decisions without proper authority.

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Junghi Woo is an IPilogue Writer and a 3L JD Candidate at Osgoode Hall Law School.

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Artificial intelligence (“AI”) is always popping in and outside of our news feeds. A prime example is Tesla’s newly announced AI-powered robot, the Recently, AI technology once again exceeded the legal community’s expectations by filing a patent for its invention of Why is this an issue? Under patent law, it is the general expectation that inventors are humans, not robots.

(‘Device for the Autonomous Bootstrapping of Unified Sentience’), an artificial neural system, and claimed that DABUS was the sole inventor of the patentable invention. Currently, from its filings in the U.S., Europe, Australia, and South Africa, . The main question for patent offices is: within patent law?

A Flexible Australian Approach

The Federal Court in Australia found that no provision expressly excludes AI from the definition of “inventor”, nor does the actual term require a human author. Resultantly, the court confirmed that it will take a flexible approach, aligning with the ’s objective which reads:

“The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners, and users of technology and the public.”

Interestingly, the court also , emphasizing that only humans can be capable of ownership, but inventorship only requires the capacity to invent, which AI arguably possesses.

Patent Law in Canada

Contrary to other jurisdictions where “inventor” is legislatively defined, in Canada, the term “inventor” is mentioned but not defined within the Patent Act. For example, under “applicant” is defined as “... an inventor and the legal representatives of an applicant or inventor.” But, it does not define the term “inventor” or specify whether an inventor must be human.

When defining this term, experts refer to (“Apotex”). Here, the Supreme Court interpreted “inventor” to mean “the person or persons who conceived of” the invention. This approach favours a stricter interpretation and defines “inventor” as a human individual.

However, the purpose of Canada’s Patent Act aligns closely with Australia’s Patents Act, which is to . In this sense, Canada could take a more flexible approach and follow the lead of our friends from across the pond. It can be further argued that Apotex did not focus on the issue of defining the term “inventor”, and the Supreme Court never considered or debated the possibility of AI inventing patentable inventions in 2002. Thus, one may say that this case does not truly address this issue, nor does it lead us to a clear conclusion of how Canada may treat such a patent filing.

Potential Benefits

Granting patents to AI “inventors” , and would align with the objective of promoting innovation. DABUS is a , which means it can participate in machine learning, processing, and critically analysing data. With such capabilities, food containers would only be the start of a novel line of inventions. Restrictive legislation may deter future innovations from being patented in Canada, and hinder our technological advancements as a society.

Risks

Unfortunately, expanding this definition could also afford companies more inventive liability loopholes. A similar example is that caused automotive fatalities. In these cases, Tesla has argued that despite AI involvement in the driving of such cars, the human driver solely determines the vehicle’s actions, Ìęso AI technologies’ ease in collecting, storing, and analyzing data could also raise privacy concerns when looking at the inventive process more closely.

Additionally, there is no doubt that expanding this definition would confuse some areas of intellectual property law, and perhaps even other areas of law. It would take decades to adapt, interpret, and clarify what role AI will have on Canadian legislation and case law unless ÌęAI can someday predict this as well.

Whatever the decision is, AI seems like it is here to stay and will only continue to grow and advance. The only question left is whether Canada will warmly embrace this giant step of innovation, or stay back and observe.

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The majority of technology and e-commerce platforms have been investing in research and development in the fashion tech space for a numbers of years. In 2017, Amazon began developing a fashion design-specific AI initiative, which creates garment designs that can then be physically manufactured by humans. In developing this initiative, the question of became a predominate concern.

This past year, the United States Patent and Trademark Office (USPTO) and other trademark offices around the world, began to assess the considerations in naming a . DABUS, which is short for “Device for the Autonomous Bootstrapping of Unified Sentience”, is an AI system that was listed as the inventor in this patent application. The USPTO issued a decision refusing to award the patent on the basis that American patent law requires that an inventor be a natural person – a requirement that is not met by AI. The that interpreting patent inventors to encompass machines would “contradict the plain reading of the patent statutes that refer to persons and individuals”.

With tech giants like Amazon growing and expanding their reach in the fashion industry, it is not surprising that initiatives such as have come to fruition. Though the USPTO rejected DABUS as an inventor, questions still remain as to whether AI as an inventor may be accepted in other jurisdictions, specifically in Canada. And if so, how will AI designers impact the current traditional landscape of how human designers and natural persons currently create and disseminate their designs with retailers and in the fashion industry more broadly?

With the current pandemic encouraging retailers to grow their online presence, it will be interesting to see how the global fashion landscape recovers, pivots, and hopefully innovates, from the opportunities that may now be more readily available in its intersection with technology.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

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Just to recap, in August 2019, Dr. Ryan Abbott and his team announced two international patent filings for “”. This raised the question whether current intellectual property systems can deal with the questions of inventorship where the inventor is not a traditional

The European Patent Office (EPO) and United Kingdom Intellectual Property Office (UKIPO) have already s and held that the applications met the requirements of patentability to the extent possible prior to the publication of the applications. The UKIPO Hearing Office accepted that DABUS created the inventions in the patent applications but could not be regarded as an inventor since it was a machine and not a natural person, referring to the and of the European Patent Convention.

Though the AI inventor itself cannot hold property, Dr. Abbott makes convincing arguments for why patent protection for AI-generated inventions is necessary. He argues that patent protection should be available for AI-generated works as it will Incentivization of innovation will not directly flow from motivating AI programs to create more inventions, but it will come as commercializing AI-generated inventions cause people and companies to increasingly develop, own, use, and invest in AI. Moreover, since patents promote the to the public, patents for AI-generated works will also increase this socially valuable information disclosure. Dr. Abbott also argues that allowing AI to be recognized as an inventor protects the integrity of patent systems as it creates s, as it is unlawful to make false statements for claiming ownership for something that a person has not himself or herself created.

If we recognize AI systems as inventors, there will be some very interesting novel challenges pertaining to how AI as an inventor may change the current non-obviousness requirement for patents. For instance, Dr. Abbott further claims that we will have to rethink (POSITA). The obviousness Ìętest requires one to ask if an average person skilled in the specific art would find a patent application obvious in the light of existing prior art and relevant information. If the POSITA finds it obvious, then the patent will not be granted. Applying this to AI inventors which have knowledge and capabilities exceeding Ìęany human researchers, any invention can be obvious. Hence, this may require changing the test for obviousness step.

These novel challenges for current intellectual property systems around the world will define the future of innovation. Possible reforms can be made by creating novel intellectual property protections for these inventions or by modifying current standards. Dr. Abbott argues for the principle of , which means that law does not discriminate between human inventors and AI. I personally believe that granting AI systems patents for their inventions by means of granting them theÌę “inventor” title should be assessed on a case-by-case basis basis, considering the invention’s degree of complexity and the autonomy possessed by AI systems in the innovation process. This can better protect public interests and prevent patent monopolies in the hands of the AI giants of the Silicon Valley companies.

Written by Elif Babaoglu, Contributing IPilogue Editor and JD Candidate at Osgoode Hall Law School with a strong interest in AI and law. Elif is also the co-director of events at the Osgoode Privacy Law Society.

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Traditionally, patents provide legal rights, like exclusive ownership, . Nonetheless, American engineer Stephen Thaler, the designer behind Dabus, has filed for patents in the name of Dabus AI, arguing that the algorithm deserves recognition and attribution for designing new products, thereby challenging the conventional patent systems around the world.

While Dabus relies on machine-learning methods that require vast amounts of data for its decision-making, with little human intervention, which is one of the requirements for an inventive act. describes a food container that uses fractal designs to create pits and bulges to allow several containers to be fitted together more tightly. Dabus’ second patent describes a flashing device used for search and rescue for attracting human attention in emergencies. Dabus’ inventions possess the elements of .

Additionally, what is more remarkable is that “”. The programmer’s lack of expertise in the subject matters of the inventions might demonstrate that Dabus is using a type of autonomous creative thinking to invent. However, the patent authorities are showing resistance in crediting AI as an inventor as there is a lack of expressly stated statutory definitions and supporting common law precedents. has told BBC that it is hesitant to grant patents to AI because doing so would likely create unforeseen legal issues, “as any change would have implications  reaching far beyond patent law, i.e. to author’s rights under copyright laws, civil liability and data protection”.

Currently, the Canadian describes a patent as a government grant that gives the inventor and the patentee’s legal representatives the exclusive right, privilege and liberty of constructing and using the invention and selling it to others to be used, but it does not provide a clear definition of who, or what, could be an inventor. Regarding who can be an inventor, the currently requires an inventor to be a person. In the U.S., defines the term inventor as: “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention, excluding AI as an inventor.”

Thus, the legal and regulatory regimes need to be modernized to address the legal issues surrounding AI, which present unique challenges to the governments, companies and individuals that are developing, using or seeking to commercialize it. In particular, the intellectual property regulatory framework is still playing catch-up to the realities of the AI technology, despite the significant interest, investment and advancements in AI. In the near future, we will be seeing more AI inventors producing a variety of inventions or creative art work, as a total of 150,637 patents dealing with the development or use of AI were published in the last couple years, an . Consequently, it will be very exciting to see the outcome of the Dabus case, as it could serve as a landmark test of patent law that could clarify the legal issues surrounding the statutory interpretation of “inventor.”

Written by Elif Babaoglu, Contributing IPilogue Editor and JD Candidate at Osgoode Hall Law School. Elif is also the co-director of events at the Osgoode Privacy Law Society.

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