Michelle Mao is an IPilogue Writer and a 2L JD candidate at Osgoode Hall Law School.

Reversing what seemed like a victory for supporters of AI-owned intellectual property, the full bench of the Federal Court of Australia����the majority view of the world: only human inventors can own patent rights to their creations.

Previously, IPilogue����that Australia has granted patent ownership to an AI inventor. In February 2022, however, the Federal Court of Australia����of the United States and the United Kingdom in disallowing AI to be owners of patents, even if the product is solely created by AI.

To recap, the decision was about Dr. Stephen L. Thaler’s application for his AI, DABUS, to be the patent owner of an invention titled “,” a product solely created by DABUS without any human interference.

Previously, the Federal Court of Australia ruled that Australian patent law did not preclude “non-human” inventors from owning patents over their creations because��.

What Does This Mean in the Canadian Context?

, the Canadian Intellectual Property Office (CIPO) issued ��for DABUS’ in Canada. While DABUS’ patent application is still developing in Canada, the recent reversal of the Australian decision will likely impact the future of patent ownership rights of AI.

In a��, it was reported that the CIPO had allowed AI to retain��copyright��authorship to their produced work. This signals a shift in Canadian attitudes towards AI ownership of their work. This decision diverges from a����for a request to let an AI own its work due to a lack of “human authorship.” Meanwhile, in the UK, computer-generated works receive copyright protection, but����the author as “the��person��by whom the arrangements necessary for the creation of the work are undertaken”, implying a necessary human element as well for copyright ownership. Thus, CIPO has differentiated its approach from both the US and the UK in allowing AI to own the copyright to their works.��

However, Canada’s��patent��laws are still very����after British and American patent laws, which may influence how our courts interpret future patent ownership applications on behalf of AI-created products. In��, the Supreme Court has already implied that the meaning of “inventor” is interpreted as a human person.

Canada has different federal legislation regarding the various aspects of intellectual property. The��,��, and����govern the three main types of intellectual property rights in Canada. Whether these cases and legal trends will leave Canadian intellectual property laws fragmented in their approach to non-human creators and inventors, only time can tell. Based on current trends, Canada could become the first Western nation to grant patent rights to AI. Advocacy for AI inventorship has evolved considerably since Dr. Thaler and DABUS embarked on their journey for AI patent ownership. Along with the forward-looking Canadian attitudes towards AI-owned copyright and no explicit definition of inventor in the Canadian , it is very possible that Canada may once again choose to differentiate itself and embrace AI inventorship through AI-owned patent rights.

The post Australia’s Reversal of its DABUS decision on AI-Generated Inventions: How Does this Impact an Imminent Canadian Discussion on AI Inventorship? appeared first on IPOsgoode.

Photo by Engin Akyurt ()

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 ��as 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.��

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.��

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 Santé Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .��

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.��

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.

91��ɫ 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.

DABUS, short for Device for the Autonomous Bootstrapping of Unified Sentience, is an artificial intelligence (“AI”) machine that can invent and generate new ideas without any human input. DABUS is a form of neurocomputing and in some sense, DABUS may be said to mimic aspects of human brain function. DABUS and its creator Dr. Stephen Thaler have garnered worldwide attention when patent applications naming DABUS as the sole inventor were filed in several national patent offices. These filings have spurred meaningful discussion about AI-related inventorship and ownership and patents have been granted in Australia and South Africa.

In Canada, Deeth Williams Wall LLP is the agent of record for the DABUS patent application. The application can be found here:��

Deeth Williams Wall is currently preparing to respond to CIPO’s objection (which can be found at the link above) and is looking for a few students to assist by researching case law and helping to develop argumentation to support the application.

Research will be conducted during the winter term and may be conducted remotely. Research may be conducted on the student’s own time with regular project check-ins.

Researchers should have a strong background and interest in IP, with a specific interest in patents. ��An interest in technology is an asset but not required for the role.

Inquiries may be sent to Jennifer Davidson at the contact information below.

Applicants may choose to perform this research for academic credit under Prof. Pina D'Agostino's supervision.�� If so, please contact Ms. Davidson before Tuesday, January 18th at noon��and confirm:

1. Your interest in performing the research for academic credit; and
2. The course(s) that you would drop if offered this position.

To apply, please send a CV and writing sample (preferably a research memo or excerpt from one) to Jennifer Davidson,��Technology and IP Law Associate,��Deeth Williams Wall LLP at��jdavidson@dww.com by 5pm on January 18th.��

The post CALL FOR APPLICATIONS - IP Researchers Needed for DABUS Patent Application appeared first on IPOsgoode.

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 ��test 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 ��any 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 the�� “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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