It’s just human nature: AI cannot be a patent inventor in Australia

The Full Federal Court has ruled that only a natural person can be an inventor under the Patents Act 1990.

In July 2021, a single judge of the Federal Court ruled that an artificial intelligence system can be an ‘inventor’ for the purposes of the Patents Act (see our earlier article on this decision here). In a unanimous decision of a five-judge appeal panel, the Full Federal Court has overturned the decision.¹ This case also raises important questions about the respective roles of the Court and the legislature in modernising the patent landscape in response to novel technologies such as AI.

KEY TAKEAWAYS

• The ‘inventor’ listed in an application for a patent under the Patents Act must be a natural person.
• This does not mean that an invention devised by an AI system is not capable of being granted a patent – however, it will be necessary to identify a human ‘inventor’ (such as the developer of the AI system) in order to apply for patent protection.
• This decision aligns with the position in the UK, EU and US, and the requirement for human authorship under Australian copyright law.
• The decision invites further consideration as to whether the Patents Act should be amended to redefine ‘inventor’ to expressly include an AI system, but cautions against the Court using statutory interpretation to decide such matters of policy itself.

BACKGROUND

The appeal concerns an invention for an improved, interlocking container for food products which was generated by an AI system named DABUS. Dr Stephen Thaler, the creator and owner of DABUS, applied for patent protection as the owner of the patent and named DABUS as the inventor. The Deputy Commissioner of Patents rejected the application for failure to nominate a valid inventor.

Justice Beach at first instance set aside the Deputy Commissioner’s decision and found that an AI system is capable of being an ‘inventor’ within the meaning of the Patents Act. Further, his Honour held that Dr Thaler was entitled to any patents protecting inventions that DABUS produced pursuant to subsections 15(1)(b) or (c) of the Patents Act because Dr Thaler was in possession of DABUS, owned the source code and owned the computer DABUS operated on.

A significant aspect of his Honour’s reasoning at first instance was based on concerns that, if a non-human being cannot be characterised as an ‘inventor’ under the Patents Act, then patentable inventions would be deprived of protection only on the basis that they were not created by a human.

The Commissioner of Patents appealed the decision to the Full Federal Court, which convened a specially-appointed panel of five judges to hear the appeal.

FULL FEDERAL COURT DECISION

The Full Federal Court overturned the first instance decision and allowed the appeal.

The substantive issue to be determined was whether the judge at first instance was correct to find that an AI system such as DABUS is capable of being an ‘inventor’ within section 15(1) of the Patents Act and regulation 3.2C(2)(aa) of the Patents Regulations. In practical terms this was because, if an inventor’s name is not provided in a patent application pursuant to r 3.2C(2)(aa), the application lapses under r 3.2C(5). Moreover, it was relevant to the question of whether Dr Thaler could be granted a patent for an invention created by an AI system pursuant to ss 15(1)(b)-(c).

The Full Court concluded that, having regard to the statutory language, structure and history of the Patents Act, and the policy objectives underlying the legislative scheme, only a natural person can be an inventor for the purposes of the Patents Act and Regulations. Further, such an inventor must be identified for any person to be entitled to a grant of a patent under ss 15(1)(b)-(d). It followed that naming DABUS as the inventor meant the application had lapsed and Dr Thaler could not be entitled to be granted the patent.

In reaching this conclusion, the Full Court took a conventional approach to statutory interpretation. Focussing first on the text of the relevant legislation, regulation 3.2C(2)(aa) requires that the applicant must ‘provide the name of the inventor of the invention to which the application relates’. Section 15 states that 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).

The Full Court considered the use of the term ‘inventor’ in these provisions and other provisions of the Patents Act, the explanatory material, previous iterations of the legislation and case law considering the role of the inventor. The Full Court found that the natural reading of these provisions was that an ‘inventor’ must be a natural person, being a person from whom another person can become entitled to the grant of a patent pursuant to ss 15(1)(b)-(d). This reading was supported by the scheme of the Patents Act and the history of the development of the law of patents. Further, the case law relating to the entitlement of a person to the grant of a patent was premised upon an invention arising from the mind of a natural person or persons.

Accordingly, the Full Court held that only a natural person can be an inventor for the purposes of the Patents Act and Regulations. It remains unclear as to whether Dr Thaler will seek special leave to appeal the decision to the High Court.

CAN AN INVENTION MADE BY AI STILL BE PATENTABLE IN AUSTRALIA?

Importantly, the Full Court emphasised that its decision did not mean that an invention devised by an AI system is not capable of being granted a patent. While, under the current legislative scheme, it will be necessary to identify a human ‘inventor’ to apply for patent protection, an invention devised by an AI system may still have such an inventor in the form of, for example:

• the owner of the machine upon which the AI software runs;
• the developer of the AI software;
• the owner of the copyright in its source code; and
• the person who inputs the data used by the AI to develop its output.

However, because it was said to be an agreed fact in this case that DABUS is the inventor of the invention and that Dr Thaler is not, the Full Court was not in a position to consider these issues in respect of Dr Thaler’s patent application.

COMPARISON WITH OTHER JURISDICTIONS AND COPYRIGHT LAWS IN AUSTRALIA

The Full Court’s decision that an AI system cannot be an ‘inventor’ under Australian patent law aligns with the approach taken in the UK,² Europe³ and the US.⁴ It also aligns with the principles of Australian copyright law, which does not protect works (such as computer code) created by non-human authors.

WHAT’S NEXT?                    

The Full Court foreshadowed that the case, and the emergence of AI technology more generally, raised a number of important propositions requiring further consideration, including:

• whether, as a matter of policy, a person who is an inventor should be redefined to include an AI system;
• if so, to whom a patent should be granted in respect of its output;
• if an AI system is capable of being recognised as an inventor, whether the standard of inventive step needs to be recalibrated; and
• what continuing role the ground of revocation for false suggestion or misrepresentation might have, in circumstances where the inventor is a machine.

However, the Full Court noted that these matters were ultimately for the legislature to address, while also observing that ‘it would appear that this should be attended to with some urgency’. The Full Court emphasised the limited role of the Court, stating that  ‘the Court must be cautious about approaching the task of statutory construction by reference to what it might regard as desirable policy, imputing that policy to the legislation, and then characterising that as the purpose of the legislation’.

1. Commissioner of Patents v Thaler [2022] FCAFC 62.
2. Stephen Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374, see our article here.
3. European Patents Office, applications EP 18 275 163 and EP 18 275 174.
4. Thaler v. Hirshfeld No. 1:20-cv-903 (U.S. District Court for the Eastern District of Virginia).