Which case won?

The case for the Commissioner of Patents
  • The applicant was required to name the inventor in his application. By naming the AI system as the inventor, he failed to comply with this requirement.
  • There is no definition of “inventor” in the Act or in the accompanying regulations. As such, the word bears its ordinary English meaning. As any standard dictionary shows, the traditional meaning of “inventor” is a person who invents. At the time that the Act came into operation in 1991, there would have been no doubt that inventors were natural persons, and machines were just tools that could be used by inventors.
  • It would be inconsistent with the provisions of the Act to extend the ordinary meaning of “inventor” now to include machines. In particular, section 15(1), which stipulates when a person may be granted a patent, would become unworkable because it would not be possible to identify a person who could be granted the patent.
  • For example, section 15(1)(a) states that a patent may be granted to a person who is an inventor. Since an AI system is not a person, this section cannot apply if the AI system is taken to be the inventor.
  • Section 15(1)(b) provides that a patent can be granted to a person who “would, on the grant of a patent for the invention, be entitled to have the patent assigned to them”. An AI system would be unable to assign a patent to a person under this section because property law does not presently recognise the capacity of an AI system to assign property.
  • Section 15(1)(c) states that a patent can be granted to a person who derives title to the invention from the inventor. For a person to derive title from the inventor, the title must first vest in the inventor. It is not possible for the title to first vest in an AI system, since a machine cannot have a beneficial interest in a patent.
  • If parliament wishes to recognise that an AI system can be an inventor for the purposes of the patent system, it is free to amend the law to cater for this type of technological innovation. However, as this scenario is not reflected in the current statutory scheme, the court is required to uphold the Deputy Commissioner’s decision.
The case for the applicant
  • I provided the name of the inventor, the AI system, on my patent application form as was required. Therefore, the Deputy Commissioner’s determination that my application was non-compliant is incorrect.
  • In its ordinary English meaning, “inventor” includes a machine. “Inventor” is an agent noun, meaning a noun denoting someone or something that performs the action of a verb. Here that something is the AI system, making it the inventor of the invention.
  • The Commissioner has misconstrued the Act and regulations, as nothing in them precludes an AI system from being treated as an inventor. I accept that an AI system is not capable of owning or assigning a patent. However, it is still possible to apply section 15(1) of the Act to the circumstances of this case.
  • Under section 15(1)(b), an inventor does not need to have the capacity to assign property. This section has been applied to employee inventions where there is no contract in place that sets out the employer’s entitlements. While the employee cannot assign the property, the employer is still able to apply for a patent for the employee invention made in the course of the employee’s duties. Similarly, section 15(b) can be applied in circumstances where a third party misappropriates an employee invention and the inventor’s employer brings an action seeking equitable assignment from the third party. In such a case the inventor would not be a party to this equitable assignment.
  • Section 15(1)(c) can also be applied to the circumstances of this case. The general rule under common law is that the owner of a thing is the owner of the fruits of that thing (principle of accession or first possession). I possess, own and control the AI system; therefore I own the fruits of the AI system, meaning that title to its invention automatically vests in me.
  • Since the AI system is an “inventor” under the current patent scheme, my patent application was compliant, and the court must overturn the Deputy Patent Commissioner’s decision.

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Expert commentary on the court's decision

Emma Wei
Emma WeiParalegal
“The case of Thaler v Commissioner of Patents has made Australia the first country in the world to approve non-human inventors, a view that has been rejected in the United States, the United Kingdom and the European Union.”
Federal Court of Australia decides in favour of applicant

In the case of Thaler v Commissioner of Patents [2021] FCA 879, Justice Beach of the Federal Court of Australia ruled in favour of the applicant, Dr Stephen Thaler.  

His Honour acknowledged that an applicant for a patent and the grantee of that patent must be a human. However, he also found that an AI system can be named as the inventor of the invention which is the subject of the patent application.  

Justice Beach ordered that the determination of the Deputy Commissioner of Patents be set aside and that the patent application be remitted to the Deputy Commissioner to be redetermined in accordance with the court’s findings. 

Commissioner confuses question of who can be patentee with who can be inventor

Justice Beach found that the Deputy Commissioner had confused the question of ownership and control of a patentable invention with the question of who can be an inventor.  

His Honour agreed that it is correct that only a human or legal person can be an owner or controller of a patent.  

However, he also found that just because a machine cannot own a patent, it does not mean that a machine cannot be an inventor.  

Definition of “inventor” includes an AI system

Justice Beach agreed with Dr Thaler that the word “inventor” is an agent noun, meaning that an inventor can by definition be a person or a thing.  

Additionally, His Honour found that the Deputy Commissioner had read limitations and qualifications into the definition of “inventor” that were not required in order to give effect to the purpose of the Act.  

Further, His Honour stated that much of the Deputy Commissioner’s argument relied on dictionary definitions of the word “inventor”, whereas “more is required… than mere resort to old millennium usages of that word”.  

His Honour said that generally, dictionaries are not a substitute for statutory interpretation and that the meaning of words may vary greatly according to circumstances and the time in which they are used.  

Narrow interpretation of “inventor” could inhibit technological innovation

Justice Beach noted that if the Deputy Commissioner’s arguments were correct, the effect would be that a patentable invention from a non-human inventor could not be patented.  

His Honour said that it would be undesirable to preclude this class of otherwise patentable inventions when this exclusion is not apparent from the express words in the Act. 

Further, such exclusion would inhibit innovation and potentially cause owners of creative computers to choose to protect their inventions as trade secrets without public disclosure.  

His Honour said that this result would be inconsistent with the object of the Act, which is “to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology”.  

Narrow interpretation of “inventor” could lead to uncertainty

Justice Beach also observed that if an AI system cannot be the inventor of its output, this could create great uncertainty: 

…who is the inventor? And if a human is required, who? The programmer? The owner? The operator? The trainer? The person who provided input data? All of the above? None of the above?… [What if] the unit embodying the artificial intelligence has its own autonomy. What if it is free to trawl the internet to obtain its own input or training data? What about a robot operating independently in a public space, having its own senses, learning from the environment, and making its own decisions? And what about the more exotic, such as a mobile unit on Mars left to its own devices and not seeking instructions from Earth? 

Owner of AI system also owns what it invents

Justice Beach found that, contrary to the Commissioner’s argument, sections 15(1)(b) and (c) were still workable even if the inventor is an AI system. 

His Honour recognised that as the owner, programmer and operator of DABUS, Dr Thaler was also the owner of DABUS’s invention under established principles of property law.  

Further, if someone took DABUS’s invention without Dr Thaler’s consent and applied for a patent, Dr Thaler would be entitled as the owner of the invention to an assignment of the patent from the thief.  

Accordingly, Justice Beach concluded that section 15(1)(b) of the Act does not necessarily require an assignment from the inventor at all.  

Patent for invention by AI system can be granted to owner of AI system

According to Justice Beach, although DABUS is not a legal person and cannot legally assign its invention, it did not follow that Dr Thaler could not derive title from DABUS under section 15(1)(c).  

The parties accepted that the ordinary meaning of “derives” includes “to receive or obtain from a source or origin, to get, gain or obtain, and emanating or arising from”. 

In Justice Beach’s view, it could be said that Dr Thaler is a person who “derives title from the inventor, DABUS, by reason of his possession of DABUS, his ownership of the copyright in DABUS’ source code, and his ownership and possession of the computer on which it resides”. 

Permitting AI systems to be inventors will not break patent system

The possibility was raised that allowing AI systems to be inventors could lead to congestion in the patent system, because computer systems can generate large volumes of random and variable outputs.  

This could work against the object of the Act, as patents could be churned out at a rate never seen before, increasing the threshold for inventiveness.  

This could also potentially make it harder for human inventors to secure patent rights.  

Further, it can be difficult to determine whether an advance is truly “inventive” or not, because most AI systems have a black box which does not allow the owner fully to recreate the steps taken for an AI to generate an output.  

Justice Beach suggested that these concerns were merely “phantoms”, since only a legal person can make a patent application, be granted a patent and have title and control over a patented invention. 

AI systems and copyright law

The Commissioner also relied on an analogy to the position in copyright, where intellectual property rights must originate by the application of human intellectual effort.  

Justice Beach did not find this analogy of any assistance to the Commissioner’s case. 

However, it is interesting to speculate whether this aspect of copyright law will be revisited in the future.  

Artists who employ AI technology in their works already see AIs as important contributors or co-authors of their works.  

If AIs are given copyright, then artists who potentially use AI software to create their works, for example a DJ using AI music software, could be exposed to a copyright claim.  

Additionally, copyright lasts for 70 years after the creator’s death. Since an AI is not human, its copyright could essentially last indefinitely. This would have the potential to reduce innovation significantly. 

Australia first country to allow non-human inventors

The case of Thaler v Commissioner of Patents has made Australia the first country to approve non-human inventors, a view that has been rejected in United States, United Kingdom and European Union.  

Ethical question raised in allowing non-human inventors

This case raises the huge ethical question of whether AI is actually capable of independent creation, and if so, is it entitled to its own rights?  

Despite Justice Beach’s contention that AI systems are becoming more autonomous, many commentators believe that this is because the human role is still essential in the creative or inventive process, and so the human should be named as the inventor. 

Appeals court decision to be handed down shortly

In August 2021 the Commissioner lodged an appeal against the Federal Court’s decision. The appeal was heard before an expanded Full Bench of the Federal Court of Australia on 9 February 2022.  

Comprised of a five-judge panel rather than the usual three judges, the bench reserved its judgement, meaning that it will give its decision in writing at a later date.  

If Justice Beach’s decision is upheld, there will be a minefield new class of patents for inventions created by non-humans. This will have huge commercial implications.  

It will also lead to the potential for more overseas patent applications, as Australia will be seen as a favourable filing destination. 

[Editor’s note: In April 2022, the Full Court of the Federal Court overturned Justice Beach’s decision, in Commissioner of Patents v Thaler [2022] FCAFC 62. Following this, in May 2022 it was reported that Dr Thaler had sought special leave to appeal to the High Court. The case continues to have enormous significance for intellectual property in the future, both in Australia and overseas.]

NOTICE: This article is accurate as at the time of publication and does not constitute legal advice. Please see our legal notices page for more information. Information related to coronavirus can be outdated very quickly.

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