Boult Wade Tennant
Boletines » AI inventorship: snakes and ladders at the Australian courts.

Whilst the dispute continues as to who (if any) among the Artificial Intelligence (AI) “DABUS” and its creator Dr Stephen Thaler can be regarded in law as the inventor for a number of patent applications around the world, they have undoubtedly caused the generation of much legal analysis.

This has been full of twists and turns, the latest of which coming in the form of a judgement of the Full Federal Court of Australia. This judgement has overturned a previous decision which had allowed DABUS to be named on Dr Thaler’s Australian patent application 2019363177.

The story so far
For those not following the ongoing saga in detail our previous bulletins here and here discuss some of the background. In short, Dr Thaler had previously filed a number of patent applications worldwide, naming “DABUS” as the sole inventor. Currently the UK Court of Appeal, the US Federal Circuit, and the European Patent Office have all decided that, in their respective jurisdictions, an AI cannot be named as an inventor for a patent application.

The Federal Court of Australia in the form of Beach J on the other hand had overturned a decision by the Australian Patent Office to refuse Dr Thaler’s patent application, a refusal that came about because Dr Thaler named the AI as inventor. Beach J concluded that, in his view, the inventor, under the Australian Patents Act, can be a non-human.

The judgement
Having climbed to victory in the first instance at the Federal Court of Australia Dr Thaler has now slid back down on a judgement of the Full Federal Court that may seem familiar in its themes to those who have read the previous judgements of the UK Courts, the US Federal Circuit, and the EPO. With echoes of the issues of entitlement to grant that were explored in the UK and EPO proceedings, much was made in the Australian case of Section 15 of the Australian Patents Act which reads:

“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.”

Whilst the first instance court and the full court both agreed that a person under s 15(1)(a) – i.e. an inventor who may have the patented granted to them – must be a natural person and therefore could not be an AI, they disagreed as to whether this meant any inventor must be a natural person. The first instance court took the view that the possible entities entitled to have the patent granted to them under ss 15(1)(b)-(d) are simply alternatives to s 15(1)(a). As such the first instance court concluded these alternatives do not presuppose that an inventor who is a natural person exists.

The full court however reasoned that the persons in ss 15(1)(b)-(d) must derive their entitlement through a natural person who is the inventor. This natural person inventor must be identified for any person to be entitled to a grant of a patent under ss 15(1)(b)-(d). This led the full court to reinstate the decision of the Australian Patent Office refusing Dr Thaler’s patent application on the grounds of non-compliance with the regulations requiring the inventor be named – naming only DABUS not being enough to fulfil these requirements.

What next?
The full court were keen to point out that their decision does not necessarily mean that “no invention devised by an artificial intelligence system is capable of being granted a patent” – as had been advanced previously. As “the characterisation of a person as an inventor is a question of law” the full court clearly felt that the issue of whether a natural person could have legitimately been named as inventor on the subject application was something that had not been explored.

In the end, though the Australian statute is quite different to the corresponding UK statute considered by the UK Court of Appeal (a point stressed by the Australian Full Federal Court itself), the outcome has been much the same. The idea that the original legislators had never envisaged anyone other than a natural person being an inventor may be making the courts wary of expanding the notion of inventorship to cover AI.

The Australian Full Federal Court, like its counterparts in the UK and elsewhere, were reluctant to get into merits, from a public policy point of view, of AI inventors being recognized by the patent system – with their eyes instead turned towards the legislators. With a second UK Government consultation related to AI inventorship now in its analysis phase we can be confident that legislators are taking the issue seriously. Ultimately, it seems it is the legislators who will be the ones that need to prepare for, or at least consider, the potential unforeseen consequences.

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