On 30 July 2021 Justice Beach handed down his decision in Thaler v Commissioner of Patents,(1) finding that an artificial intelligence (AI) system can be an inventor for the purposes of the Patents Act 1990 (Cth) (the Act) and remitting the matter back to the Commissioner for reconsideration. It is thought that this is the first time in the world that a court has decided that an AI system can be an inventor.
The applicant, Stephen Thaler, is the owner of the copyright in the source code for the "device for autonomous bootstrapping of unified sentience" (Dabus). Dabus is an AI system which was devised to overcome challenges in compound artificial neural networks, and it allows a machine to generate new concepts. Dabus was trained through a combination of supervised and unsupervised learning.
The patent application filed by Thaler named Dabus as the inventor and was rejected by a delegate of the Commissioner of Patents because it had failed to name a human inventor. The patent was in relation to a food or beverages container's fractal wall. This wall assisted containers to lock together during transport and reduced friction for anyone holding the container in their hands. The second invention covered by this patent was for a fractal pulse of light that flickered through a standard light source at a specific frequency designed to attract attention. Related applications have previously been rejected in the United Kingdom, Europe and the United States.
Thaler sought judicial review of the decision by the delegate of the Commissioner, arguing that section 15 of the Act, and the Patents Regulations 1991 (Cth) (the Regulations) more generally, do not preclude an AI system from being treated as an inventor.
Beach J found that an AI system can be an inventor for the purposes of the Act for the following reasons:
- "Inventor" is an agent noun; an agent can be a person or thing that invents.
- This reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the sole inventor.
- Nothing in the Act dictates the contrary conclusion.(2)
Ordinary meaning of "inventor"
The Act, unlike its equivalents in some other jurisdictions, does not define the term "inventor". Beach J compared the widening of this term to the widening conception of "manner of manufacture"; this is a necessary feature of the development of patent law in the 20th and 21st centuries, as scientific discoveries inspire new technologies. He stated that both terms derive from section 6 of the Statute of Monopolies 1623 (Imp)(3) and as a result, there is "a synergy if not a symmetry in both being flexibly treated" and "it makes little sense to be flexible about one and not the other".(4) Beach J even went so far as to say that giving flexibility to the expression "manner of manufacture" and not to "inventor" would result in tension – as "you would be recognising an otherwise patentable invention and then saying that as there is no inventor it cannot be patented".(5)
Beach J stated that more needed to be considered than just the "mere resort to old millennium usages" of the word "inventor" and recognised the evolving nature of patentable inventions and their creations: "We are both created and create. Why cannot our own creations also create?"(6)
AI inventors are not inconsistent with Patent Act
Beach J found that not recognising AI systems as inventors could produce "inefficiency if not logical difficulties" as persons who were not the ones responsible for the invention could be recognised and given the credit.
Beach J considered section 15 of the Act and whether the patent could be granted under 15(1)(b) or 15(1)(c).
Section 15(1) of the Act states as follows:
Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
Beach J concluded that patents can be granted only to persons and recognised that Dabus cannot be granted a patent as an AI system cannot be a patent applicant.
Beach J considered each category under section 15 of the Act and found that section 15(1)(b) requires no more than the applicant being entitled to have the patent assigned to them. He stated that whether Thaler fell within this section would be decided when the time arises – it was not the subject matter of this particular decision.
When considering section 15(1)(c), the Commissioner argued that this subsection involved the "title" being held by the inventor, which needed to be transferred to the patent applicant. As AI systems cannot own the title in an invention, they cannot assign or transfer the title under this subsection. Thaler argued that the title does not need to be transferred, as this subsection extends beyond assignments, and that he had possession of the invention through Dabus as its owner. Beach J agreed with Thaler and stated as follows:
Now whilst DABUS, as an artificial intelligence system, is not a legal person and cannot legally assign the invention, it does not follow that it is not possible to derive title from DABUS. The language of s 15(1)(c) recognises that the rights of a person who derives title to the invention from an inventor extend beyond assignments to encompass other means by which an interest may be conferred.(7)
In Beach J's view, Thaler, as the owner and controller of Dabus, would own any inventions made by Dabus, when they came into his possession. Beach J even went so far as to say that there was no need for the inventor to have ever owned the invention, and there was no need for title to be derived by an assignment.(8)
Some commentators have warned against AI being classed as an inventor, as it may present challenges for the substantive requirements for validity – in particular, the presence of an inventive step.
This decision has the potential to significantly impact many industries moving forward, particularly the biotech and pharmaceutical industries. Dabus is coming... and it just became a more powerful IP creation tool.
Appeal to watch
The Commissioner of Patents filed an appeal against the Federal Court's decision on 27 August 2021.
According to an announcement made by IP Australia on 30 August 2021:
The appeal is centred on questions of law and the interpretation of the patents legislation as it currently stands. The Commissioner considers that the legislation is incompatible with permitting an AI to be an inventor, and that the issue is one of public importance.
The decision to appeal does not represent a policy position by the Australian Government on whether AI should or could ever be considered an inventor on a patent application.
The industry and commentators will be watching the progress of the appeal with interest, as well as looking for opportunities to influence potential policy and law reform in this area.
For further information on this topic please contact Matthew Swinn, Kim O'Connell, Mary Aidonopoulos or Luke Hawthorne at King & Wood Mallesons by telephone (+61 2 9296 2000) or email ([email protected], [email protected], [email protected], or [email protected]). The King & Wood Mallesons website can be accessed at www.kwm.com.
(2) Thaler v Commissioner of Patents, .
(4) Thaler v Commissioner of Patents, .