A decision was handed down on 30 July 2021 by Justice Beach of the Federal Court in Thaler v Commissioner of Patents  FCA 879 that artificial intelligence may be an inventor under section 15(1)(a) of the Patents Act 1990 (Cth) (the Act) and section 3.2C(2)(aa) of the Patents Regulations 1991 (Cth) (the Regulations).
These sections provide:
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.
3.2C Specifications—formalities check for PCT application
(2) The applicant must:
(aa) provide the name of the inventor of the invention to which the application relates.
This case involved artificial intelligence known as the device for the autonomous bootstrapping of unified sentience (DABUS). The claimed invention was said to be the output of DABUS’ processes, being products and methods ‘..concerning containers, devices and methods for attracting enhanced attention using convex and concave fractal elements.‘
The Deputy Commissioner had previously decided that DABUS could not be an inventor for the purposes of the Act and Regulations. Dr Thaler’s patent application was refused by the Deputy Commissioner because it failed to “provide the name of the inventor of the invention to which the application relates”. This case involved an application by Dr Thaler for judicial review of the Deputy Commissioner’s decision.
The Federal Court described the position of the Commissioner in this case that:
(a) an AI system can invent something that satisfies all requirements of a patent ‘…in terms of novelty, inventiveness and utility…‘; but
(b) such AI system is unable to be an inventor because section 15 of the Act is ‘….not capable of sensible operation in the situation where an inventor would be an artificial intelligence machine as it is not possible to identify a person who could be granted a patent‘.
The applicant before the Federal Court, Dr Thaler, is referred to by the Court as the owner of the copyright in DABUS’ source code as well as the owner, responsible for and operator of, the computer on which DABUS operates, but was said to not be the inventor.
DABUS was not a natural or legal person, but an AI system incorporating artificial neural networks.
Similar applications in respect of DABUS have been lodged with patent offices in a number of other countries including the US, China, Europe and South Africa.
The Federal Court noted that:
- AI systems involve artificial neural networks, which simulate how a human brain processes and generates information;
- Artificial neural networks are part of machine learning, which involves computer systems learning from data. Artificial neural networks are based on mathematic modelling;
- Artificial intelligence has been used in pharmaceutical research, including for the following purposes:
- finding molecular targets, namely a molecular structure which an active pharmaceutical ingredient will interact with and trigger effects;
- screening of candidates for chemical substances investigated during drug design;
- drug repurposing, where the drug may interact not only with what was the original target, but also other biological structures;
- simulation of vaccines.
The Federal Court found that:
- the word ‘inventor’ is an agent noun; ‘an agent can be a person or thing that invents’;
- this ‘…reflects the reality in terms of many patentable inventions where it cannot sensibly be said that a human is the inventor’;
- the Act did not contain anything that required a contrary conclusion.
In Australia, a legal person is an entity that has the ‘capacity’ to be in a legal relationship.1 It is also generally understood that to have legal personality means to be capable of having legal rights and duties within a certain legal system, such as to enter into contracts, sue, and be sued. Traditionally, a legal person has been either a human being or a corporation. However, the legislature is able to create any legal person that it wishes, with any capacities that it deems appropriate.
Justice Beach ultimately concluded that an inventor recognised under the Act can be an AI system or device. Although, it was nevertheless maintained by the Court that a non-human inventor could not be the applicant for a patent, nor a grantee of a patent under the Act.
Although the Commissioner has appealed the decision to the Full Court of the Federal Court, the decision continues to spark debate on artificial inventorship and the impact it will have on Australian and global patent systems.
As the first country to hand down a Court decision in favour of non-human inventors, Australia has adopted a position that is currently at odds with Courts in the United States, United Kingdom and European Union. The only other country which has favourably considered Dr Thaler’s application is South Africa, which granted the patent in July 2021 as a result of an administrative decision.
On one hand, the recognition of artificial inventorship has raised concerns around the proprietary rights and legal personhood of AI systems, as well as questions around the ‘non-human’ nature of inventors. For instance how can a non-human inventor assign its rights in the invention to the applicant/owner which can only be a legal person, such as a human being or corporation?
Others, however, have viewed the Federal Court’s decision more positively, highlighting how it promotes and incentivises technological innovation. For now, it may be that neither of these views provide a satisfactory answer to Justice Beach’s question, “We are both created and create. Why cannot our own creations create?”2
The Commissioner of Patents in Australia lodged it’s appeal against the decision in Thaler v Commissioner of Patents to the Full Court of the Federal Court of Australia on 27 August 2021.
We will continue to monitor the case and provide an update on any future developments.
This article was written by Ashley Holland, Partner and Helen Kavadias, Partner.
1 Queensland Rail (2015) 256 CLR 171, 181–2  (French CJ, Hayne, Kiefel, Bell, Keane and Nettle JJ), 192–3  (Gageler J).
2 Thaler, .