Artificial Intelligence (“AI”) systems are capable of creating artistic works and inventions without human involvement. These AI creations raise challenges to intellectual property (“IP”) frameworks worldwide. Can a patent application have an AI inventor? Are AI created works protectable by copyright? Who owns AI-generated IP?
Patents for AI-generated inventions
Dr. Stephen Thaler filed patent applications in various patent offices worldwide. This was not a typical patent application. Dr. Thaler was not listed as the inventor. Rather, the sole inventor was “Device for Autonomous Bootstrapping of Unified Sentience,” or DABUS, an AI machine created by Dr. Thaler and designed to invent.
In some jurisdictions, including the US, the patent application was rejected on the basis that a non-human machine cannot be an inventor. However, the South African office granted the DABUS application, the world’s first patent for an AI-created invention. Notably, South Africa does not have a substantive patent examination process. Further, the Australian Federal Court reversed the Australian office’s rejection of the DABUS patent application and found that an AI machine could be an inventor.
In December 2021, the Canadian Intellectual Property Office (“CIPO”) issued a non-compliance notice for the DABUS patent application because “the inventor is a machine and it does not appear possible for a machine to have rights under Canadian law or to transfer those rights to a human.” However, the CIPO notice also stated that the applicant Dr. Thaler may attempt to comply by submitting a statement on behalf of the AI machine identifying himself as the legal representative of the machine. The CIPO examination of the DABUS patent application is still ongoing.
If an AI machine cannot be listed as an inventor, then this threshold determination may bar patent protection for AI-generated inventions. This may dissuade disclosure of valuable AI-generated inventions, which may instead be protected as confidential information.
Copyright for AI-generated work
DABUS has also created artwork that represents its simulations of a dying brain, including an image titled “A Recent Entrance to Paradise.” The US office refused to register copyright for the work on the basis that human authorship is required. On February 14, 2022, the US Copyright Review board upheld the refusal, noting that historically courts have limited copyright protection to works created by human authors. For example, a US court ruled that a monkey cannot own copyright in its “selfie” photo.
DABUS was the sole listed author of the artwork. Would listing a human co-author change this finding?
In December 2021, CIPO granted a copyright registration for a painting titled “Suryast” that lists two co-authors, Mr. Ankit Sahni and RAGHAV Artificial Intelligence Painting App (RAGHAV), making Suryast the first ever Canadian copyright registration with an AI author.
However, it is unclear if CIPO would register copyright for the DABUS work having no human co-author. While there is no explicit definition of the term “author,” Canadian case law has traditionally held that an author “must be a natural person” “who exercises skill and judgment” in creating the work. Listing a human co-author for an AI created work seems to meet that requirement.
The Canadian government is in the process of “modernizing” the Copyright Act and issued a report which references authorship and ownership of AI-generated and AI-assisted works.1
Who owns the IP rights?
Even if an AI system can be a patent inventor or copyright author, it is unclear whether an applicant is entitled to own these AI creations. How can a machine transfer IP rights to the applicant? Is a machine’s creator by default its legal representative? What if the owner is different than the machine’s creator? What if a user of the machine was involved in the creation process, and that user is different than the machine’s creator or owner? IP law will have to adapt to respond to novel questions triggered by AI.
1. Committee Report No. 16 — INDU (42-1) — House of Commons of Canada (ourcommons.ca) | ↩