When inventions invent

In a globally groundbreaking decision, the Federal Court of Australia has held that an artificial intelligence (AI) system can be named as the inventor on a patent.

Thaler v Commissioner of Patents[1] was a challenge brought by Dr Stephen Thaler against IP Australia in respect of both its assertion that the Patents Act 1990 (Cth) did not allow for non-human inventors, and its consequent rejection of his patent application.

Rejection of patent application

Dr Thaler is a member of The Artificial Inventor Project (AIP) which aims to pursue ‘intellectual property rights for inventions generated by an AI without a traditional human inventor’. He is also the creator of Device for the Autonomous Bootstrapping of Unified Sentience (DABUS) – an artificial neural network which is itself capable of originating and describing novel concepts. These concepts appear to be many and varied and include an improved food container and an emergency warning light, among others.

Since September 2019, Dr Thaler has sought to patent these inventions around the world, naming DABUS as the inventor.  Note that, in each case, the applicant for the patent has been Dr Thaler himself but he has been seeking to have DABUS formally acknowledged as the originator of the invention.

In February 2021, the Australian Deputy Commissioner of Patents held that the Patents Act required a named inventor to be a ‘natural person’ (i.e. a human) and that Dr Thaler’s patent application in Australia was therefore invalid.

Appeal to the Federal Court

In the Federal Court, Justice Beach overturned the Deputy Commissioner’s decision, noting that ‘inventor’ is not defined in the Patents Act and so should be given its ordinary meaning, encompassing both a person or thing ‘that invents’. To do otherwise, he reasoned, would be to deny protection to inventions which have not been created by humans. This was not just some flight of whimsy on His Honour’s part, but a deliberate reference to s.2A Patents Act which sets out the objects of Australia’s patent regime as being to ‘promote economic wellbeing through technological innovation and the transfer and dissemination of technology’. Justice Beach found nothing in the Patents Act to suggest AI should be excluded from this regime.

This is the first significant victory[2] for AIP and diverges markedly from contrary positions taken by the USA, EU, and UK. Dr Thaler’s colleague, Professor Ryan Abbott, explained that AIP’s motivation was to secure acknowledgement for AI when it has ‘functionally [done] the job of an inventor, ... to inform the public that this was an AI-generated invention, … [and] to prevent someone from taking credit for work that they didn’t do.’

However, Justice Beach was quite clear that his decision only considered whether AI could be named as an inventor – applicants, owners and assignees of patents must still be legal persons,[3] and AI might still be excluded from other aspects of the Patents Act.

Who owns an AI invention?

On the subject of ownership, His Honour was satisfied that Dr Thaler was the only person entitled to any patents protecting DABUS’ inventions,[4] given that he had created DABUS, owned both the computer on which DABUS operated and the copyright in DABUS’ source code, and was also the named applicant for the patent. In other circumstances, the situation may not be so clear, with the potential for multiple competing claimants to an AI-invented patent. This might result in one or more of the following being entitled to apply in future cases:

  • the AI’s programmer;
  • the AI’s developer;
  • the AI’s operator;
  • the owner of the copyright in the AI’s source code;
  • the person responsible for selecting the AI’s input data;
  • an investor in the AI.

Recognising AI inventorship in this way will also have significant repercussions for the concept of ‘inventiveness’ in terms of considering:

  • whether the ‘person skilled in the art’ (the notional touchstone for inventiveness) is assumed to have had the benefit of AI assistance;
  • whether ‘common general knowledge’ (industry standard background knowledge) is assumed to include AI-generated developments.

Resolving these issues is likely to be challenging, not least because finding answers might require the impossible – a clear understanding of an AI’s processes.[5]

The future

This decision is important as it is the first time an AI has been judicially acknowledged as the inventor of a rigorously examined patent. While it is not yet final (the patent application has been sent back to IP Australia for reconsideration, and there remains the possibility of a further appeal to the High Court), it marks an important development in computer-assisted innovation. It also draws a stark contrast with the legislative requirements for human actors in other intellectual property rights in Australia, notably copyright law which specifically only applies to human authors.

It remains to be seen whether other jurisdictions are tempted to follow Australia’s lead or to go with the more conservative majority view that inventors, not inventions, invent.

 

This memo presents an overview and commentary of the subject matter. It is not provided in the context of a solicitor-client relationship and no duty of care is assumed or accepted. It does not constitute legal advice.

© Moulis Legal 2021

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

[2] Although AIP had previously obtained a South African patent naming DABUS as the inventor, the patent system in that country is less formal than elsewhere and patents are granted without examination, often failing to stand up to later legal challenge. 

[3] In other words, either individuals or corporations.

[4] Under e.g. s 15(1)(b) and (c) Patents Act 1990 (Cth).

[5] This is referred to as the 'Black Box' problem, whereby it may be impossible to identify, describe or even recreate the steps taken by an AI system in generating a particular output.

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Graeme Fearon
Special Counsel