Rise of the machines: Federal Court of Australia holds that artificial intelligence can be a patent ‘inventor’

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.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

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, 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:

• 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.⁹ Similarly, there is nothing implied by patent law more generally that would drive a construction of the Act as requiring a human inventor.¹⁰ 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.¹¹ 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.¹²
  
  
• 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.¹³ 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.¹⁴ He found that allowing a non-human inventor to be named would further the object of the Act, while failing to do so would inhibit innovation and 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?”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  

• 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.¹⁷ His Honour noted that similar “agent nouns”, to “inventor”, like “computer”, “lawnmower”, and “dishwasher” which might originally have been used to describe persons, were now commonly used to describe machines which carry out the same function.¹⁸ This is arguable. 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 naming the inventor had been lodged. Section 15, on the other hand, deals with who (among 4 classes of persons) may be granted a patent, a question that is potentially still some years away.¹⁹ 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.²⁰ 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?

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.