Publication
2nd Circuit defers to executive will on application of sovereign immunity
The Second Circuit recently held that federal common law protections of sovereign immunity did not preclude prosecution of a state-owned foreign corporation.
Author:
Australia | Publication | October 2021
In our last edition of Commonwealth Quarterly, we wrote about ‘The use of Artificial Intelligence or automated processes in Commonwealth decision-making’. If a recent Federal Court of Australia judgment is anything to go by, the increasing deployment of artificial intelligence (AI) in fields previously considered the domain of individual minds is a trend that we should only expect to continue. In this decision, handed down in July this year, his Honour Justice Beach found that a patent applicant can name as the inventor, not a human person, but an AI system.1 The decision is now the subject of an appeal by the Commissioner of Patents to the Full Court of the Federal Court of Australia.
Justice Beach’s first instance decision represents the first judicial step worldwide towards the recognition of AI machines as inventors of patents, and, if upheld on appeal, could represent a significant divergence between Australian patent law on this issue and other jurisdictions which have recently taken a different approach, (including the EU and the UK).2
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.3 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.4 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.5 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.6
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, to which his Honour attached great importance, 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.”7
His Honour noted that the Act clearly required the applicant for the patent to be a legal person but also that it did not contain any definition of an “inventor”.
Instead of focusing on dictionary definitions of the word “inventor” 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?”8
In answering this question in the affirmative, Justice Beach considered the following key matters:
“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?”15
Justice Beach found that recognising that an inventor need not be a human simply reflects the reality that there exist many inventions that satisfy all other requirements for patentability but which cannot be said to have a human inventor.16
In announcing its decision to appeal Justice Beach’s ruling, the Commissioner of Patents stated that it “considers that the legislation is incompatible with permitting an AI to be an inventor, and that the issue is one of public importance”. However, it also noted that “the decision to appeal does not represent a policy position by the Australian Government on whether AI should or could ever be considered an inventor on a patent application”, and reinforced the Australian Government’s commitment to ensuring all Australians benefit from emerging AI technology.
Given its broader significance in potentially opening the door for AI inventions to be successfully patented in Australia, we (and no doubt the Patents Office) will be watching closely for the Full Court’s ruling. If Justice Beach’s decision is ultimately upheld on appeal, it will be interesting to see whether this judicial indication of a potential willingness to embrace a more expansive role for AI going forward opens a Pandora’s Box of AI inventors across Australia. For many observers it would certainly lead to consideration of new legislation to address the myriad of issues that would arise.
Publication
The Second Circuit recently held that federal common law protections of sovereign immunity did not preclude prosecution of a state-owned foreign corporation.
Publication
Facing the fast-growing development of AI across the globe, particularly Generative AI (GenAI), the G7 competition authorities and policymakers (Canada, France, Germany, Japan, Italy, the UK and the US) and the European Commission met in Italy on 3-4 October 2024 to discuss the main competition challenges raised by these new technologies in digital markets.
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