As it becomes more pervasive across different fields, lawyers must be increasingly interdisciplinary
This article was produced in partnership with Oyen Wiggs Green & Mutala LLP.
Mallory Hendry of Canadian Lawyer sat down with Jennifer Marles, partner at Oyen Wiggs, to discuss the implications of AI underpinning more and more innovations.
As artificial intelligence becomes more mainstream it’s also becoming more pervasive, underpinning more and more innovations. And as its use becomes more cross-disciplinary there’s increasing collaboration required from the lawyers involved in protecting client innovations.
“It’s sneaking in even on the life sciences side, where I’m starting to see clients using AI to help come up with new products or methods for things like ag tech and drug development,” says Jennifer Marles, partner at Oyen Wiggs Green & Mutala LLP.
Though Marles practices more in the biotech space, not specifically with computer implemented inventions or AI, she says the firm is increasingly helping clients protect innovations that cover multiple fields.
“While I understand the life sciences side of things, I may have to work with colleagues who understand the AI to fully protect that aspect of it. There’s protecting the AI itself, which is one thing, and then there’s protecting all the of innovations that come from the AI in its different applications.”
Over time, inventorship has shifted from an individual activity, such as Thomas Edison coming up with an idea and getting a patent, to more of a corporate activity where multiple engineers or groups of research scientists are, by virtue of their association with a company or a university, collaborating to innovate. Marles sees AI as the next phase in the evolution of how innovations are developed and what the patent system is protecting.
More specifically, increasing complexities of the research being conducted contribute to this upward trend in the number of people it takes to come up with an invention, and AI is a further step in the evolution of innovation: current iterations are powerful and help speed up the process of innovation. Looking at drug discovery as an example, to make a compound and test it would be time, labour, and cost intensive for a team of researchers. But a computer, once trained, can run through thousands and thousands of potential compounds quite quickly.
“Even if it’s not right, it’s still pointing you in the right direction and can really narrow the field of wet lab research that has to be done in the real world at a high cost,” Marles notes.
Where the space is seeing struggles now pertains to the role of AI in inventorship – can a machine be an inventor or an author for copyright? The question is currently more at a theoretical level but Marles points to the multiple patent applications Stephen Thaler has filed in several countries that list his creation, an AI system called Device for Autonomous Bootstrapping of Unified Sentience or DABUS, as the inventor. As patent law is statutory, the various jurisdictions must address the question as to whether AI can legally be named an inventor of a patent – and for the most part Thaler is not succeeding. Initial success in Australia was reversed, and in the US a recent decision from the appellate court ruled an inventor must be a natural person. Thaler also filed a corresponding application in Canada where so far, he’s received an informality notice from the Canadian Patent Office and has requested an extension of time to respond to it. Given the approach in other countries, it seems likely Thaler will appeal to the courts if his position is ultimately rejected.
Thaler’s attempt to establish that the machine itself can engage in inventive activity may very well be the future, but it’s more of a theoretical question at this point, Marles says.
“What is being denied is not necessarily protection for the invention because it was made by artificial intelligence, but rather that a non-person can create an invention. There seems to be a consensus that the creator of the artificial intelligence or its owner could be credited as the inventor of an invention that is created by artificial intelligence.”
When it comes to pragmatically advising clients, Marles says they could avoid the problem that Thaler is challenging by naming the developers of the AI as inventors. But practically speaking there could be problems down the line if someone moves on after inventing the AI, but the AI itself continues inventing.
“How long does the inventive contribution of that person endure? There could be practical issues that come up because if the AI can keep inventing for 50 years and the person who created it dies, for example, it creates pragmatic problems for lawyers getting things signed and transferred over. So, the position that the creators of the AI are the inventors may become less tenable over time.”
Designating the owner of the AI as an inventor is another possibility, but the owner could itself be a corporate entity and so that may not represent an ideal approach either.
Whatever the future may hold when it comes to AI and its applications, the Canadian government and/or the courts will have to tackle these complex questions eventually. In the meantime, its ever-expanding role in clients’ lives must be recognized – and matched – by the legal profession serving them.
“In my own practice of law, I use AI to do patent searching, trademarks goods and services, legal research – we’re using it in all areas and our clients are using it in all areas too. For now, that translates to being increasingly interdisciplinary in our dealings with clients and Oyen Wiggs is well-positioned to meet that need.”
Jennifer helps clients in the biotechnology, chemical and medical device industries build the value of their companies by securing patent protection in Canada, the United States, and beyond. Jennifer also assists clients with technology licensing, handling investor due diligence and evaluating their freedom to practise their technology. At all times, Jennifer tries to be aware of her clients’ commercial goals and budgetary constraints, and she enjoys the rigors of learning about their new technologies. Jennifer’s clients include a broad range of early stage and established companies and universities. She has helped her clients to patent inventions on a global basis. Jennifer has filed many provisional and PCT applications, and has assisted clients with optimizing their intellectual property protection strategy globally.
