The Australian Federal Court has reviewed the decision of the Commissioner of Patents in Stephen L. Thaler [2021] APO 5, which I discussed in a past post back in February 2021. The Court has departed from what appears to be the international trend, and has held that, contrary to the Commissioner's decision, an AI machine can be named as an inventor in a patent application under the Patents Act.

Justice Beach found that Mr Thaler's entitlement to the invention prima facie falls within s 15(1)(c) of the Act because Mr Thaler has derived title to the invention from the inventor, DABUS, through possession of the invention. Beach J's decision confirms that under s15(1)(c) there is no need for the inventor ever to have owned the invention, and there is no need for title to be derived by an assignment. His honor further found that the Commissioner's construction of section 15(1)(b), which pre-supposed an earlier vesting of title to the invention in the inventor, was incorrect.

Justice Beach found that the Commissioner's decision that an AI machine cannot be an inventor is incompatible with the objective of the Act set out in section 2A, which is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In considering the meaning of "inventor" and the question as to whether AI machines could be inventors under the Patents Act, Beach J noted that:

a) there is no specific provision in the Act that expressly prevented AI machines being named as inventors;

b) unlike copyright law, which requires a human author or the existence of moral rights, there is no specific aspect of patent law that would drive a construction of the Act as excluding non-human inventors;

c) the word "inventor" was not defined in the Act, therefore it has its ordinary meaning. The word "inventor" is an agent noun. Agent nouns include the suffix "or" or "er" to describe the agent, that does the act referred to by the verb. Examples of agent nouns, such as "computer" and "dishwasher", confirm that the agent can be a person or a thing; and

d) The word "inventor" like the word "computer" is a word that might originally have been used only to describe persons, when only humans could make inventions, but can now aptly be used to describe machines which can carry out the same function.

Generally, on a fair reading of ss 15(1)(b) and 15(1)(c), a patent can be granted to a legal person for an invention with an artificial intelligence system or device as the inventor.

 https://www.judgments.fedcourt.gov.au/judgments/Ju