Whether an AI machine can be recognised as an inventor for patent registration purposes raises fascinating legal and social anthropological questions. This is explored in two very recent Federal Court cases involving the Australian Commissioner of Patents and Dr Thaler, which depending on your point of view, led to some surprising and controversial findings.

Background

Artificial intelligence or ‘AI’ refers to the ability of a computer, or computer-controlled robot, to perform tasks commonly associated with sentient beings, most typically humans. This includes the ability to reason, discover new ideas or meanings, and learn from past experience.

As AI becomes increasingly prevalent in developed economies like Australia, a recent question that has arisen before the courts is whether an AI system can be recognised as an inventor under principles of patent law.

In simple terms a patent provides the inventor exclusive rights to the patented process, design, or invention for a certain period in exchange for a complete disclosure of their invention.

As discussed below, this idea was explored, with significant controversy, in the recent Federal Court cases involving an AI inventor.

1. Landmark judgment: Thaler v Commissioner of Patents [2021] FCA 879

In 2019, University of Surrey law professor Ryan Abbot commenced patent applications in 17 different countries on behalf of Dr Stephen Thaler. Unusually, these applications sought to have Dr Thaler’s AI device ‘DABUS’ recognised as an inventor.

DABUS – an acronym for Device for the Autonomous Bootstrapping of Unified Sentience – is a creative AI paradigm trained to mimic aspects of human brain function. DABUS has created two inventions (1) a food container and (2) a flashing light for attracting enhanced attention, which it’s inventors assert were invented solely by DABUS as the output of its own creative functionality. Its inventors claim that DABUS is “sentient” in that chain-based concepts launch a series of memories that are equivalent to subjective feelings in humans, and that DABUS has an emotional appreciation for what it conceives.

Abbot argued that DABUS could autonomously perform the ‘inventive step’ that is required for patentable inventions by section 18 of the Patents Act 1990 (Cth) (Patents Act).[1]

Consistent with the general international position, the Australian Deputy Commissioner rejected the application in the first instance to recognise DABUS as the inventor on the basis that a patent inventor must be a human. Surprisingly, following Dr Thaler’s appeal, on 30 July 2021 the Federal Court agreed that an AI system could be named as the inventor on a patent application for the purposes of the Patents Act.

Justice Beach’s decision overturned an earlier decision of IP Australia that only a human can be named as an inventor, making it the first judicial determination in the world to say ‘yes’ to AI inventors. In coming to this determination, the Federal Court was of the view that:

• it was a fallacy that an inventor could only be human;
• the Patents Act did not specifically reject the possibility of non-human inventors;
• the Deputy Commissioner had failed to consider the evolving nature of patentable inventions and their creators in the current age; and
• unless the appeal was upheld, it would create the precedent that an AI developed invention could never be protected

2. Judgment reversed: Commissioner of Patents v Thaler [2022] FCAFC 62

On 9 February 2022, the Commissioner of Patents appealed to the Full Court of the Federal Court.

The appeal was successful, overturning the earlier decision of Justice Beach. The Full Court found that DABUS could not be named as the inventor for reasons including (but not limited to):

• the sub-sections of section 15 the Patents Act contemplates the inventor must either be a natural person or an entity with legal identity that can assign or grant rights;
• a machine has no legal identity and cannot assign or grant rights under law;
• the term ‘inventor’ has its ordinary meaning, being a natural person, and should have the same meaning throughout section 15 (and the Patents Act generally); and
• this matched Patents Act policy objectives and historical use of patents, including the goal of granting a reward for the development of an invention.

The case reversal affirms the Commissioner’s view that an inventor must be a natural person. The case is significant in that the Australian position now aligns with the rest of the Western world in determining that an AI system cannot be an inventor, i.e., UK, Europe and USA.

3. Where to Next?

The Full Court of the Federal Court did not accept that its decision meant that applications to register an invention ‘developed’ by AI would necessarily fail for lack of a person with identifiable legal identity. The Court also observed that Dr Thaler had provoked an important and worthwhile debate as to the role of AI under the Patents Act and Patents Regulations 1991 (Cth).

Looking towards the future, how might IP agencies and governments amend the current legal frameworks to make way for new AI innovations? At an international level, WIPO is leading the conversation by bringing together member states and other stakeholders to discuss the impact of Al on IP. At a national level, the Australian Federal Government has released an ‘Artificial Intelligence Action Plan’ – a key feature of the Australian Government’s ‘Digital Economy Strategy’ which aims to deliver on the Government’s ambition for Australia to be a leading digital economy and society by 2030. We will provide further insights on the Australian Federal Government’s ‘Artificial Intelligence Action Plan’.

This is yet another chapter in the global debate over whether law and policy should adapt to the changing innovation landscape.

We specialise in helping people (and machines) build exciting new business models. For advice regarding commercialisation and regulation of digital innovations, please contact us below.

+      +      +

[1] Patents Act 1990 (Cth) s 18(1)(b)(ii).