The Australian Federal Court was the first and only court worldwide to decide that an artificial intelligence (AI) can be named as an inventor on a patent. However, on 13 April 2022, an enlarged five-judge bench of the Full Federal Court unanimously overturned that decision, finding that only a natural person could be an inventor under Australian law in Commissioner of Patents v Thaler  FCAFC 62.
In 2019, Dr Stephen Thaler filed a PCT application naming an AI machine known as DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) as the inventor. Dr Thaler is the owner of the copyright in the DABUS source code and the computer on which DABUS operates, as well as being responsible for its maintenance and running costs.
Following entry into the Australian national phase,[i] the Patent Office found the application did not comply with the necessary formalities because it did not name a human inventor. The Deputy Commissioner of Patents found that the laws relating to who is entitled to grant of a patent are “not capable of sensible operation” when an AI is the inventor.[ii]
As discussed in our previous article, the Deputy Commissioner’s decision was overturned on appeal by Beach J of the Federal Court, who considered there is nothing in the Patents Act 1990 (Cth) (Act) to support a conclusion that an AI cannot be an inventor. His Honour was also satisfied that Dr Thaler derived title from DABUS under the common law principle of accession.[iii]
The formalities requirements for PCT applications entering the national phase in Australia include that the application must “provide the name of the inventor of the invention to which the application relates”.[iv]
Also central to the proceedings is subsection 15(1) of the Act, which provides that a patent for an invention may only be granted to a person who:
- is the inventor; or
- would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
- derives title to the invention from the inventor or a person mentioned in paragraph (b); or
- is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
However, there is no definition of “inventor” provided in the Act.
Full Court decision
Unlike the primary judge, the Full Court considered that a natural reading of subsection 15(1) required entitlement in the circumstances set out in paragraphs (b)-(d) to ultimately flow from the inventor defined in paragraph (a), who is a natural person.
In reaching its decision, the Full Court took into account not only the language of the Act but its underlying policy. In doing so, Their Honours considered it plain that “the law relating to the entitlement of a person to the grant of a patent is premised upon an invention for the purposes of the Patents Act arising from the mind of a natural person or persons,” whose contribution to the inventive conceptive was intended be rewarded by grant of patent.
However, while the Full Court did not consider the Act, case law or underlying policy supported a conclusion that an “inventor” for the purposes of the Act can be anything other than a natural person, it nonetheless appreciated the imperative for policy makers to address the issue “with some urgency”. In that regard, Their Honours identified a number of issues for consideration, including the role of the “skilled person” in the assessment of inventive step (and support / enablement), and how the ground of revocation for false suggestion or misrepresentation would operate when an AI is the inventor.
With the Full Court’s decision, Australia joins the UK, European and US courts, as well as various patent offices (see our previous article on the New Zealand Patent Office’s decision), in rejecting AI as an inventor. However, the Full Court did not rule out the possibility of AI-generated inventions being patentable.
Although controversial, the first instance decision by Beach J appeared to appreciate the importance of AI in driving innovation in a number of sectors, including the pharmaceutical industry. Indeed, His Honour believed it would be the antithesis of the object of the Act to deny AI inventor status.
It is likely Dr Thaler will apply for special leave to appeal to the High Court, so stay tuned for further developments in relation to this case and any associated legislative reform in Australia. If you have any questions in the meantime, please contact Dr Claire Gregg.
[i] The Australian patent application, AU 2019363177, was filed by Davies Collison Cave on behalf of Dr Thaler
[ii] Stephen L. Thaler  APO 5
[iii] Thaler v Commissioner of Patents  FCA 879
[iv] Patents Regulations 1991 (Cth), reg 3.2C(2)(aa)