Australian appeal to determine future of global relationship with AI
Who should read this
- Intellectual property professionals
- Developers of artificial intelligence (AI) and automated decision-making systems
Things you should know
- In a world-first decision handed down on 30 July 2021 (Thaler v Commissioner of Patents (2021) FCA 879), the Federal Court of Australia has recognised that an AI system can be listed as an inventor for the purposes of obtaining a patent under the Patents Act 1990 (Cth) (the Act).
- The Commissioner of Patents appealed the decision to the Full Court of the Federal Court of Australia on 27 August 2021, and we await the results of the appeal.
- The Deputy Commissioner of Patents had rejected two applications which named an AI system (known as a Device for Autonomous Bootstrapping of Unified Sentience (DABUS)) as the inventor. The applications were rejected on the grounds that a non-human could not be an ‘inventor’ for the purposes of the Act.
- The owner and creator of DABUS claimed that a legitimate application had been lodged and that his machine satisfied the requirements set out in the Act.
- At trial, the Court accepted that DABUS was an inventor for the purposes of the applications as:
- the term ‘inventor’ did not exclude non-human creators;
- recognising AI systems as inventors was consistent with the objects of the Act and other historical legal developments; and
- there were no laws or rules that were contrary to the above views.
- The application was remitted to the Australian Patents Office for further consideration.
What is DABUS?
Created by Dr Stephen Thaler, DABUS is an AI machine that generates new ideas on its own. The device uses vast datasets and neural networks to gain an in-depth understanding of the world, and then conducts multiple cycles of independent experimentation and idea generation to produce valuable insights and inventions.
In this case, Dr Thaler filed patent applications for two inventions: the first was for a food and beverage container that used ‘fractal geometry’ to minimise friction, and the second was for a device that flickers light to correspond with human neural activity to attract attention. Both inventions were claimed to have been independently generated by DABUS and the patent applications listed DABUS as the inventor.
While DABUS was named as the inventor on the application, the Deputy Commissioner held that an AI system was incapable of being considered the inventor for the purposes of 3.2(C)(2)(aa) of the Patents Regulations 1991 (Cth), and therefore no inventor had been named.
The question faced by the Court was whether a valid application had been lodged, not whether the application should be approved. To answer this, the Court spent substantial time considering section 15(1) (below) which prescribes who may be granted a patent, and particularly sections 15(1)(b) and (c) with respect to granting a patent to a person where the inventor is not themselves a natural person.
‘15 Who may be granted a patent?
1. 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).
2. A patent may be granted to a person whether or not he or she is an Australian citizen.’
The word ‘inventor’
Australian patent legislation does not define the term “inventor’. In arguments, the Commissioner of Patents referred to dictionary definitions and asserted that ‘inventor’ should be interpreted to mean a natural person. Justice Jonathan Beach disagreed with this method of analysis, placing emphasis on the need to consider the evolving nature of patentable inventions and their creators. His Honour said ‘“inventor” is an agent noun…the suffix “or” or “er” indicates that the noun describes the agent that does the act referred to by the verb’. In other words, if something invents, it is an inventor. His Honour held that an agent could be a person or a thing, and cited similar linguistic constructions, including terms like ‘dishwasher’, ‘lawnmower’, and ‘computer’.
Importantly, it was not suggested that DABUS itself could be granted a patent under section 15(1)(a) of the Act, given the introductory wording that the patent be granted to a person.
Proprietary rights and title
The Commissioner argued that to be an inventor, one needed to have the capacity to hold and enforce proprietary rights because any entitlements of a patentee must flow from the inventor. Accordingly, the Commissioner concluded that because DABUS was incapable of having proprietary rights – because it is a machine – there was no way for any entitlements to flow to Dr Thaler in accordance with sections 15(1)(b) and (c).
Justice Beach stated that section 15(1)(b) only required the applicant be entitled to have a patent assigned to them, in the event that there was a grant. Consequently, this section did not require an inventor to be involved in the assigning process, let alone that the inventor be a human one. His Honour offered real-world examples of arrangements where the inventor is not involved in the assigning process, including employment relationships and contractual agreements where the assignment happens automatically. Accordingly, the Court held that Dr Thaler could be assigned title under section 15(1)(b) should the correct circumstances arise.
Justice Beach spoke broadly about section 15(1)(c) and concluded that because proprietary rights exist in an invention before applying for a patent, and that inventions are capable of being possessed, Dr Thaler could derive title from DABUS. His Honour explained the chain of connection as such:
‘[i]n my view, Dr Thaler, as the owner and controller of DABUS, would own any inventions made by DABUS, when they came into his possession. In this case, Dr Thaler apparently obtained possession of the invention through and from DABUS. And as a consequence of his possession of the invention, combined with his ownership and control of DABUS, he prima facie obtained title to the invention. By deriving possession of the invention from DABUS, Dr Thaler prima facie derived title. In this respect, title can be derived from the inventor notwithstanding that it vests ab initio other than in the inventor. That is, 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’ (at ).
Object of the Act
The object of the Act is set out at 2A:
‘The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.’
The Commissioner argued that by requiring inventors to be human, it created a system that balanced the interests of producers, owners and users of technology and the public. The Commissioner acknowledged a possible future where AI systems would be recognised as inventors by legislative developments, but reasserted that the Commissioner’s interpretation gave effect to the current statutory purpose.
His Honour criticised the Commissioner’s approach on this issue and went as far as to call it the ‘antithesis to the object’ of the Act. In Beach J’s view, it was consistent with the object of the Act to construe the term ‘inventor’ so as to promote innovation and reward it irrespective of whether that innovation was made by a human.
His Honour also stated that his decision reflects the current reality in terms of the many otherwise-patentable inventions where it could not be said that a human is the inventor – for example, where the pharmaceutical industry uses AI technologies to guide drug development, yet pharmaceutical companies themselves claim to be the inventors.
Finally, His Honour observed there were no specific provisions in the Act expressly refuting that an AI machine could be an inventor, and that there is no specific aspect of patent law (unlike copyright) that excludes non-human inventors.
For the purposes of the patent applications, the Court found DABUS could appropriately be named as an inventor and that Dr Thaler could acquire title to the inventions. Beach J ruled the applications to be valid and remitted the decision to the Commissioner for further consideration.
The Commissioner of Patents filed an appeal to the Full Federal Court of Australia on 27 August 2021. We await the decision from the Full Federal Court.
What have other jurisdictions decided?
Thaler filed similar patents in the UK, US and EU, which were rejected in those jurisdictions. In 2020, the Intellectual Property Office in the UK rejected the applications on the grounds that DABUS was not a natural person and therefore could not be an inventor. The UK High Court agreed with this decision and went one step further saying that because of its non-person status, DABUS was incapable of passing the proprietary rights of the inventions to Dr Thaler for the purposes of the patent.
In South Africa, the decision was made to allow the patent application with DABUS as the inventor; however South Africa does not conduct formal reviews of applications until the application is granted. Allowing the application in this case was essentially an administrative decision which may be challenged in the future. Accordingly, the Australian case is the first in the world to judicially consider and rule that AI systems can be inventors.
What this means
While academic notions such as the definition of AI and questions of self-awareness and Turing tests were expressly left aside, the Court’s finding has given rise to criticism and headlines around the world.
Industry commentators and academics have noted wide-ranging negative implications, including:
- This decision may impact the relevant concepts of ‘inventive step’ and ‘person skilled in the relevant art’. By ruling that an AI can be an inventor, AI’s computational processes are arguably put into the same category as human ingenuity and creativity. How will human inventions compare, or compete, against those of an AI machine?
- Given complex AI machines and supercomputers are largely accessed by corporations and governments, the decision may lead to inequalities and monopolies in the IP sector. Relevantly, what formula would be used for assigning rights for things part-invented by a human and part-invented by a machine?
- Due to the sheer computational power of AI machines, it is possible to imagine a future where any invention conjured by humans may have already been invented by an AI. This future presents a risk that human-driven innovation may become disenfranchised by lack of incentive, or indeed by risk of infringement, as patent infringement does not rely on a person having knowledge of an existing invention.
On the other hand, there are several arguments in favour of recognising AI systems as inventors, including:
- Recognition facilitates the disclosure of AI-created inventions. Without such a mechanism, creators of AI systems may be inclined to claim these inventions themselves, which could lead to complicated and expensive disputes about inventorship and patent eligibility, which places additional burden on the court system.
- The decision (if it stands) may encourage an increase in investment and interest in the AI industry in Australia.
If you have questions about the issues discussed in this article, please get in touch with a member of our Digital & IP team:
Belinda Breakspear, Partner – 07 3233 8968
Alex Hutchens, Partner – 02 8241 5609
Matt McMillian, Partner – 02 8241 5644
Jennifer Ashlan, Senior Associate – 07 3233 8718
With special thanks to Ben Quick and Jennifer Ashlan for preparing this article.
This publication covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. It is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.