Australia was the first jurisdiction where the Artificial Inventor Project experienced substantive success, with a single judge of the Federal Court finding in July 2021 that there was no barrier to DABUS being named as an inventor. The Commissioner of Patents appealed. Notably a panel of five judges was formed to hear the appeal; two more than for most appeals.
On 12 April 2022, the Full Court delivered a unanimous decision in favour of the Commissioner of Patents, overturning the earlier finding. Most helpfully, the Full Court provided a thorough review of earlier authority and commentary on entitlement that lead to the unavoidable conclusions that for the purposes of the Australian Patents Act:
- “The origin of entitlement to the grant of a patent lies in human endeavour, which is rewarded by the grant of a limited term monopoly”;
- That “Only a natural person can be an inventor”;
- “An inventor must be identified for any person to be entitled to a grant of a patent”; and
- “Something without a legal identity cannot give effect to an assignment”.
It could be considered wasteful for a panel of five judges to convene to overturn an earlier decision on an issue of niche statutory (re)interpretation. And so it was not unexpected to see the appeal court go further and strongly suggest a reconsideration of current policy settings in light of artificial intelligence. The court said:
“In our view, there are many propositions that arise for consideration in the context of artificial intelligence and inventions. They include whether, as a matter of policy, a person who is an inventor should be redefined to include an artificial intelligence. If so, to whom should a patent be granted in respect of its output? The options include one or more of: the owner of the machine upon which the artificial intelligence software runs, the developer of the artificial intelligence software, the owner of the copyright in its source code, the person who inputs the data used by the artificial intelligence to develop its output, and no doubt others. If an artificial intelligence is capable of being recognised as an inventor, should the standard of inventive step be recalibrated such that it is no longer judged by reference to the knowledge and thought processes of the hypothetical uninventive skilled worker in the field? If so, how? What continuing role might the ground of revocation for false suggestion or misrepresentation have, in circumstances where the inventor is a machine?”
To these we would add: can an artificial intelligence make an invention or, is it a tool through which new and useful things can be brought into existence without there being any invention?
To that end it is important to note that the Full Court’s decision was issued on the basis of an agreed set of facts in which no alternative inventor would be named. The Full Court was careful to highlight that “Dr Thaler is the owner of the copyright in the DABUS source code and the computer on which DABUS operates, and that he is also responsible for the maintenance and running costs” from which one might infer inventorship could be attributed to that natural person. But for now, at least, that determination remains unanswered.
- Consider joining FICPI’s Study & Work Committee on Software, High-Tech & Computer Related Issues, known as CET 6.
- Read Érik van der Vyver’s blog “Inventive AI in South Africa and Australia: can such applications be validly filed and granted in these two Commonwealth States?”
 Commissioner of Patents v Thaler  FCAFC 62.
 Ibid. at .
 Ibid. at .
 Ibid. at .
 Commissioner of Patents v Thaler  FCAFC 62 at .
 Ibid. at .