It is not often that one reads a decision which raises not only complex and interesting issues of the correct interpretation of Australian patent legislation, but also calls upon the reader to consider existential and philosophical questions regarding the Promethean role of technology in modern society. But that is just what his Honour Justice Beach has done in a recent judgment that a patent applicant can name as the inventor, not a human person, but an artificial intelligence (AI) system.
This decision represents the first judicial step worldwide towards the recognition of AI machines as inventors of patents, and is significant as it may signal a divergence between Australian patent law on this issue and other jurisdictions who have recently taken a different approach, including the EU and the UK.
Background and procedural history
The decision centred around an AI system known as a ‘Device for the Autonomous Bootstrapping of Unified Sentience’, or DABUS for short. DABUS was, according to its creator Dr Stephen Thaler, trained to mimic aspects of human brain function and had, as was claimed in the patent application, invented containers, devices and methods for attracting enhanced attention as the output of its own functionality. The application was filed in 2019 by Dr Thaler as the patentee, but named DABUS itself as the inventor.
The Deputy Commissioner of Patents (Commissioner) had previously rejected the application at the formalities stage, on the basis that Dr Thaler had failed to comply with a regulation requiring him to provide the name of the inventor to which the application related. The Commissioner held that the Patents Act 1990 (Cth) (the Act) and, by extension, subordinate regulations governing the formalities of patent applications, were inconsistent with an AI machine being named as the inventor, which was required to be a human person. The Commissioner found that Dr Thaler’s failure to comply with a direction under the regulation had not been, and indeed could not, be remedied, and the application had lapsed.
Justice Beach’s findings
Dr Thaler appealed the Commissioner’s decision to the Federal Court of Australia, and the appeal was heard in early July this year. Justice Beach’s 228-paragraph decision was handed down less than a month later, which is probably a reflection both of the importance of the issues in dispute and of his Honour’s engagement with the subject matter.
In short, Justice Beach disagreed with the Commissioner, finding not only that there was nothing in the Act that required the inventor to be a natural or legal person, but also that such a finding would lead to an outcome that is incompatible with the stated object of the Act itself, being:
“to provide a patent system 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.”
Instead of focusing on the dictionary definition of the word “inventor” as it appears in the Act and the regulations as the Commissioner had, Justice Beach sought to grapple with a broader and more fundamental consideration, noting that “we are both created and create” and asking himself “why cannot our own creations also create?”
In answering this question in the affirmative, Justice Beach considered the following key matters:
- First, he noted that there is nothing in the Act or regulations that expressly requires that the inventor be a human in order for a patent application to be valid, and nothing that expressly refutes the proposition that an AI machine can be an inventor. Similarly, there is nothing implied by patent law more generally that would drive a construction of the Act as requiring a human inventor. This can be contrasted with, for example, copyright law which, by its very nature, involves the requirement for a human author and the existence of moral rights. Unlike the Act, however, Australian copyright legislation has codified specific mechanisms for overcoming issues arising from the development of technology, deeming that the author of a cinematograph film as the director, producer and screenwriter.
- Second, and relatedly, the Act should be construed consistently with its overarching object which, Justice Beach found, supports a finding that a non-human entity can be named as the inventor of a patent application. His Honour had regard to the development of AI technology in recent years, and its anticipated future role in technological innovation, particularly in the pharmaceuticals space. He found that allowing a non-human inventor to be named would further the object of the Act, while failing to do so could lead to inefficiency and logical difficulties, raising questions such as:
“If the output of an artificial intelligence system is said to be the invention, 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?”
Justice Beach found that recognising that an inventor need not be a human simply reflects the reality that there exists many inventions that satisfy all other requirements for patentability but cannot be said to have a human inventor. The decision does not however, explain how the mere fact that such inventions could be patentable furthers the object of the Act, particularly whether and how granting such patents would promote “economic wellbeing” and balance the interests of the relevant stakeholders. It is also not clear how granting the status of inventorship to AI machines is likely to further the object of incentivising innovation given that such machines cannot, by their very nature, be incentivised.
- Third, his Honour considered that the Commissioner’s narrow focus on the ordinary dictionary definition of the word “inventor” as referring to someone (that is, a person) who invents was misplaced. His Honour noted that agent nouns, like “computer” and “dishwasher” which might originally have been used to describe persons, were now commonly used to describe machines which carry out the same function. While it may indeed be the case that the word inventor is on the path towards a similar shift in meaning and understanding, it is not clear that its current ‘ordinary meaning’ could be said to include non-human inventors. Further, it seems clear from the use of the word within the Act that the drafters had in mind only a human inventor (see, for example, section 15 of the Act which governs who may be granted a patent, as discussed further below).
- Fourth, his Honour found that the Commissioner’s focus on the requirements for who may be granted a patent under section 15 of the Act was also misplaced, given that the only question that the Commissioner had been called upon to determine at this stage was whether a valid application had been lodged. Section 15, on the other hand, deals with who may be granted a patent, a question that is potentially still some years away. His Honour accepted that only a human or other legal person can be an owner, controller or patentee, but found that it does not necessarily follow that the inventor can only be human. The broader ramifications of his Honour’s more expansive interpretation of the word “inventor” in the context of section 15, which governs whether the DABUS application could actually become a granted patent held by Dr Thaler, will seemingly be left for another day.
Where to from here?
His Honour ordered that the Commissioner’s determinations be set aside and the matter be remitted back to the Patents Office for reconsideration.
Given its broader significance in potentially opening the door for AI inventions to be successfully patented in Australia, it will be unsurprising if the Commissioner decides to appeal the decision to the Full Federal Court. We (and no doubt the Patents Office) will be watching closely for any Full Court authority handed down on the subject, to see whether this decision has opened a Pandora’s Box for AI inventors across Australia.
 Thaler v Commissioner of Patents  FCA 879 (Thaler).
 Both the European Patents Office and the UK High Court have recently rejected patent applications naming DABUS as the inventor. The UK High Court decision is currently on appeal. Although an equivalent application has recently been granted in South Africa, this was not the subject of judicial consideration.
 Thaler at , .
 Being reg 3.2(C)(aa) of the Patents Regulations 1991 (Cth). See Stephen L. Thaler  APO 5 (APO Decision) at .
 APO Decision at .
 Being reg 3.2C(4) of of the Patents Regulations 1991 (Cth). See APO Decision at .
 Section 2A, Patents Act 1990 (Cth). See Thaler at -, -.
 Thaler at .
 Thaler at , .
 Thaler at .
 Thaler at .
 See the definitions of “author” and “maker” in section 189 of the Copyright Act 1968 (Cth).
 See Thaler at -, -.
 See, in particular, Beach J’s consideration of the role of AI in pharmaceutical research in Thaler at -.
 Thaler at -.
 Thaler at , .
 As compared to incentivising the computer scientists and others who might develop AI machines or the make use of the output of such machines (see Thaler at ), which presumably is not affected by whether or not the AI machine could be named as the inventor.
 Thaler at , -.
 Thaler at , -.
 Thaler at -, [224(c)].
 Thaler at .