Australian Court: AI can’t be “inventor” in Australian patent

The Full Court of the Federal Court of Australia (the Federal Courts appellate court) has overruled an earlier decision relating to artificial intelligence (AI) and “inventors” of patentable works.  In accordance with the decision in Commissioner of Patents v Thaler [2022] FCAFC 62 (Thaler), an AI can no longer be considered as an “inventor” for the purposes of the Patents Act 1990 (Cth) (Act).  For a summary of the earlier decision which was the subject of this appeal, including a brief outline of the facts of the case, see our article here.

The legal question under appeal

Central to issue in dispute was whether or not an AI was capable of being granted a patent in its capacity as an inventor in accordance with section 15 of the Act.  That section provides:

“15 Who may be granted a patent?

• Subject to this Act, a patent for an invention may only be granted to a person who:
• Is an 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).
• A patent may be granted to a person whether or not he or she is an Australian citizen.“

This law is explicit.  If an entity does not fall within any of the abovementioned categories, they are not capable of be granted a patent.

This particular case was largely determined upon the process for an application for a patent, which is outlined in section 29A of the Act.  That section sets out various and stringent requirements which an applicant must follow in their application for patent letters patent.  The Patent Regulations 1991 (Cth) (Regulations) add a further layer of complexity to the obligations of an applicant for a patent.  These Regulations were the subject of substantial analysis by the Full Court.

Of particular relevance is regulation 3.2C(2)(aa), concerning a check of the formalities of a patent application, which requires that the applicant for a patent must provide the “name of the inventor of the invention to which the application relates.’” The Full Court described this regulation as a mechanism “intended to provide a preliminary stage whereby the Commissioner may screen a PCT (patent) application for non-compliance with the requirements prescribed therein.”^[1]  The most relevant aspect of that regulation is the requirement that the applicant must, in an application for a patent, “provide the name of the inventor of the invention to which the application relates“.

Therefore, it follows that the appeal was largely based on whether the mechanisms establishing the procedure to apply for a patent were at the forefront of the Full Courts consideration.  Ultimately, it needed to be determined whether such mechanisms allowed for a non-person, in this case an AI, to be deemed an inventor in the context of the Act and the Regulations.

Findings of the Full Court

The Full Court considered that the answer to the above question lied within an examination of the Act and Regulations and as such analysed the various forms of patent law as passed and amended throughout Australia’s history.^[2]  It was noted that throughout the development of patent law since from 1624 until now the question of whether an AI could be an inventor has never been considered.^[3]  The decision, referring to the Statute of Monopolies, emphasised that the benefits of a patent flow to the ingenuity resulting in invention of the ‘true and first inventor’.  What is meant by this phrase needed to be understood in the context of the legislation as in force and as had passed.  Against this backdrop, it comes as no surprise then that the law had an underlying requirement of personhood as relates to an inventor.

Whilst various judgments were considered by the Full Court in Thaler, the following excerpt at paragraph [115] exemplifies the prevailing understanding of what is required of an ‘inventor’:

“… the law to which we have referred has proceeded on the assumption that only a natural person could be an inventor.  That assumption found expression in the different context considered by the High Court in D’Arcy where the majority said … at [6]:

Despite the formulation of the claimed invention as a class of product, its substance is information embodied in arrangements of nucleotides.  The information is not ‘made’ by human action.  It is discerned.  That feature of the claims raises a question about how they fit within the concept of a ‘manner of manufacture’.  As appears from s 6 of the Statute of Monopolies, an invention is something which involves ‘making’.  It must reside in something.  It may be a product.  It may be a process.  It may be an outcome which can be characterised, in the language of NRDC, as an ‘artificially created state of affairs’.  Whatever it is, it must be something brought about by human action.”

What does this mean for AI’s as inventors?

The decision of the Full Court explicitly recognises that Dr. Thaler intended to provoke debate as to AI’s place within the Act and Regulations and that such debate is important and worthwhile.^[4]  But, and as has been stated, this decision was constrained to considering only whether section 15 of the Act and regulation 3.2C(2)(aa) of the Regulations had been complied with.  In fact, it was expressly stated that the question of whether this case involves a human inventor was not explored and remains undecided.^[5]

The Full Court, perhaps anticipating a policy change in relation to AI as inventors, laid out various questions it considered important to answer should AI be capable of being deemed inventors.  This is all to say that the door is not yet shut on AI as inventors and a shift in policy may, as a result of technological advancement or otherwise, become inevitable.

Takeaways

It is important to understand that no philosophical question of an AI’s capacity to invent was undertaken by the Full Court.  Instead, the technical analysis of a set of regulations resulted in a finding that in this particular case the patent applicant had not complied with the procedural requirements of such an application and as a result was not able to register a patent against the works created by an AI system.  It was observed that the question of whether an AI might constitute an inventor is unanswered and will likely involved consideration from Parliament.

Links and further references

Legislation

Patents Act 1990 (Cth)

Patent Regulations 1991 (Cth)

Cases

Commissioner of Patents v Thaler [2022] FCAFC 62

Further information about artificial intelligence

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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.

[1] Thaler [79] Commissioner of Patents v Thaler [2022] FCAFC 62.

[2] Thaler [73] – [86].

[3]  Thaler at [115].

[4] Thaler at [119].

[5] Thaler at [121].

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