Anthony Selleck reviews today’s decision in Commissioner of Patents v Thaler [2022] FCAFC 62 which reverses an earlier ruling that artificial intelligence can be an “inventor” for the purposes of the Australian Patents Act 1990.

In July 2021, the Australian Federal Court delivered what can be described as a stunning decision, that an artificial intelligence can be an “inventor” for the purposes of the Australian Patents Act 1990. The decision seemingly opened the door to the Australian Patent Office granting patents to outputs wholly produced by artificial intelligence systems with no human intervention.

The Commissioner of Patents appealed the decision to the Full Court, and earlier today, the Court unanimously allowed the Commissioner’s appeal.

Prior to today’s decision, Australia was the only country in which a court decided in favour of the patent applicant, with courts in Germany, the United States and United Kingdom (along with Patent Offices in a number of jurisdictions) reaching the opposite conclusion.

Central to the Full Court’s decision was the observation that the law relating to the entitlement of a person to the grant of a patent is premised upon an invention that arises “from the mind of a natural person or persons”. In reaching this conclusion, the Full Court noted that it is those who contribute to, or supply, the inventive concept who are entitled to the grant of a patent, and that the patent grant is a reward for the inventor’s “human” ingenuity.

The Full Court also observed that it is the “inventor” (as opposed to the Applicant) who makes certain representations in the patent specification as to the nature of the invention. It is these representations that underlie the patent bargain between the inventor and the state, and are intertwined with concepts material to the validity of patent applications and patents. According to the Full Court, the Patents Act 1990 does not contemplate beings other than human being having the capacity to make representations, or indeed misrepresentations that may render a patent liable to be revoked.

In the absence of a successful appeal to the High Court of Australia, it can be assumed that Australian patent applications must name a human inventor, or are at risk of lapsing.

There are many policy issues that arise with respect to granting patent rights to the results and insights that artificial intelligence systems generate. We have no doubt that these will be hotly debated in the future, in the context of reforms to the patent system or the creation of new intellectual property systems specifically tailored to artificial intelligence.