Clifford Chance

The decision of the Full Federal Court of Australia in Commissioner of Patents v Thaler [2022] FCAFC 62 has confirmed that only a natural person can be named as an inventor in a patent application.

The Full Court recently overturned an earlier decision of the Federal Court which held that an artificial intelligence (AI) system can be named as an ‘inventor’ for the purposes of the Patents Act 1990 (Cth) (Patents Act) and Patent Regulations 1991 (Cth) (Patents Regulations) (see our previous article: All Eyes on AI – Australian Government Launches Australia's First AI Action Plan which covered the earlier decision).

The Full Court’s decision brings Australia in line with the current judicial position in the UK, Europe and the US among other jurisdictions. (see our articles: EPO rules only humans can be inventors – another blow to the DABUS patents  and The nail in the coffin for AI inventorship? )

Background

Dr Thaler filed Australian Patent Application No. 2019363177 entitled ‘Food container and devices and methods for attracting enhanced attention’ (Application). In the Application, DABUS (an AI system which stands for 'device for the autonomous bootstrapping of unified sentience') was named as the inventor. As such, the Application did not identify any natural person as the inventor.

The Deputy Commissioner of Patents (Deputy Commissioner) determined that the Application did not comply with reg 3.2C of the Patents Regulations on the basis that Patents Act and Patents Regulations did not allow for an AI system to be named as an inventor in a patent application.

Dr Thaler appealed to the Federal Court. The primary judge set aside the Deputy Commissioner's determination and concluded that the Deputy Commissioner had erred in deciding that, under the Patents Act, an inventor must be human.

The primary judge found that an AI system can be named as an inventor for the purposes of the Patents Act and Regulations for the following key reasons:

• 'inventor' is an agent noun and an agent can be a person or thing that invents;
• the ability for an AI system to be named as an inventor mirrors the reality that many otherwise patentable inventions cannot reasonably be attributed to a sole human inventor; and
  
• nothing in the Patents Act expressly provides that an AI system cannot be named as an inventor.
  

The Commissioner of Patents subsequently appealed the primary judge's decision to the Full Court.

Full Court decision

The Full Court considered whether a device characterised as an AI machine can constitute an 'inventor' within the meaning ascribed to that term in the Patents Act and Patents Regulations.  

Having regard to the statutory language, structure and history of the Patents Act and Patents Regulations, and the policy objectives underlying the legislative scheme, the Full Court unanimously held that only a natural person can be named as an inventor for the purposes of the Patents Act and Patents Regulations.  

The Full Court observed that:

"the outcome in the present case is the same as the outcome of the Court of Appeal in Thaler UK. Whilst there are important aspects of the reasoning of the learned judges in that Court with which we respectfully agree, we consider that the task in the present case focusses on the particular statutory language of the Patents Act, which in material respects differs from that in the equivalent patents legislation in the United Kingdom".

The Full Court stressed that its decision did not mean that an invention by an AI system is not capable of being granted a patent.  This suggests that whilst the Australian legislative scheme requires a human inventor to apply for patent protection, an invention devised by an AI system would still have a 'human inventor' in the form of, for example:

• the owner of the machine upon which the AI software runs;
• the developer of the AI software;
  
• the owner of the copyright in its source code; and
  
• the person who inputs the data used by the AI to develop its output.
  

Given that it was an agreed fact in this case that DABUS is the inventor of the invention and that Dr Thaler is not, the question of whether the Application has a 'human inventor' was not explored in the litigation and remains undecided.

Further, the Full Court indicated that it is not up to the courts to seek to step into the shoes of policymakers and stated that:

"the Court must be cautious about approaching the task of statutory construction by reference to what it might regard as desirable policy, imputing that policy to the legislation, and then characterising that as the purpose of the legislation".

To this end, the Full Court urged policymakers to turn their minds to various issues of increasing importance raised in this case, such as whether, as a matter of policy, a person who is an inventor should be redefined to include an AI system:

• 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 AI software runs, the developer of the AI software, the owner of the copyright in its source code, the person who inputs the data used by the AI to develop its output, and no doubt others.

• If an AI system 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 an AI system?

Key Takeaways

The decision of the Full Court indicates that the ‘inventor’ named in a patent application under the Patents Act must be a natural person. This does not mean that an invention devised by an AI system is not capable of being granted a patent – in such circumstances it will be necessary to identify a natural person who is the inventor by reason of their involvement in order to apply for patent protection.

The decision also raises pertinent policy questions regarding AI and inventorship, which may prompt legislative debate.

Counsel for Dr Thaler has since filed an application seeking special leave to appeal to the High Court (being the final appellate court in Australia).