Can artificial intelligence be the inventor of a patent?

• Home
• Artificial intelligence law
• This insight

The advent of artificial intelligence (AI) has raised some interesting legal issues.   One such issue is whether the AI itself can be the ‘inventor’ of a patented invention in Australia.   The recent decision of the Commissioner of Patents of Stephen L. Thaler [2021] APO 5 (Thaler) explores what it means to be an inventor.   This was done to determine whether a “Device for the Autonomous Bootstrapping of Unified Sentience” (DABUS) – an artificial intelligence machine developed from what is known as “Creativity Machine” technology can be named as an inventor for the purpose of an Australian patent application.

In Thaler, DABUS was unable to be validly filed as a patent application regardless of who is named as the applicant.  A patent based on an invention devised by a machine cannot be validly granted, even if the APO does not know the true nature of the inventor, because there is clearly no mechanism for any named applicant to derive a legal right.  In practice, applicants are required to provide a declaration of entitlement to the APO, and in the case of an invention of a machine, this declaration would not be valid.

Patents cannot be granted to machines

Although the Patents Act 1990 (Cth) (Act) has not explicitly defined what an ‘inventor’ is, an applicant should have its title derived to the invention from the inventor and that inventor must be named.

Section 15(1) of the Act 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).

The key to the operation of the section 15(1) of the Act is that the recipient of a patent must be a natural person.  A machine is not a person, and that there is no mechanism whereby the right to apply for a patent on an invention created by a machine can be legally transferred.  This means a machine cannot be the applicant or the inventor for the purposes of satisfying the Act.

As set out in paragraph 20 of the APO decision:

“… the entitlement of the patentee flows from the inventor, and absent devolution the inventor will become the patentee. That appears to imply that the inventor must also be a person. An alternative interpretation of section 15(1) is that an inventor who is not a person cannot become a patentee, and the patentee must instead be a person who satisfies either paragraph (b), (c) or (d).”

As such, the APO stated that DABUS was incapable of transferring title to the invention as it could not have title or have a beneficial interest in the property since it is not a legal person.  Hence a machine has been refused recognition as an inventor and cannot be the subject of a valid patent.

Machines cannot assign property

The Delegate of the Commissioner of Patents (the Delegate) dealt with section 15(1)(b), which deals with a prospective assignment of a granted patent to the nominated applicant, where paragraph 26 of Thaler noted:

“Starting with section 15(1)(b), is the owner of an artificial intelligence machine entitled to have a patent assigned to them by the machine? It is an uncontroversial observation that the law does not presently recognise the capacity of an artificial intelligence machine to assign property. Consequently section 15(1)(b) is not consistent with treating an artificial intelligence machine as an inventor.”

 Since a machine does not have the ability to own or assign property, section 15(1)(b) cannot apply even if the machine could be treated as an inventor.  Therefore the provision is unable to operate to allow a natural person (or otherwise) to be granted a patent on an invention allegedly devised by a non-person.

Can an Applicant ‘Derive Title’ from a Machine?

Whilst it is possible for an applicant to derive title from an inventor of an entity, an entity must have a beneficial interest in the property based on paragraph 27 of Thaler.  The Delegate held that it is not feasible for a machine to have a beneficial interest in property due to the reasons listed above.

Links and further references

Legislation

Patents Act 1990 (Cth)

Cases

Stephen L. Thaler [2021] APO 5

Further information about artificial intelligence and IP

If you need advice on any aspect of protecting or enforcing your intellectual property rights, contact us for a confidential and obligation free discussion:

Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

---

Related insights about artificial intelligence and IP