Can an AI be an inventor under the Patents Act 1990 (Cth)

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In the recent decision of Thaler v Commissioner of Patents [2021] FCA 879, Beach J rejected the Deputy Commissioner of Patents’ (DCP) determination that, due to the inventor being named as an artificial intelligence system (AI) rather than a human, a patent application did not comply with the Patents Regulations 1991 (Cth) (Regulations).

Background to Thaler v Commissioner of Patents

DABUS, an AI also known as ‘a device for the autonomous bootstrapping of unified sentience’ invented an output of processes relating to:

“containers, devices and methods for attracting enhanced attention using convex and concave fractal elements”.^[1]

Dr Stephen Thaler, who owns the copyright in the DABUS’ source code and is the owner and operator of the computer which runs DABUS, applied for a patent over DABUS’ invention and named DABUS itself as an inventor.  The DCP rejected Dr Thaler’s application on the basis that it did not meet the requirements of regulation 3.2C(2)(aa) of the Regulations, which requires the name of the inventor to be included on the application, because DABUS was not a human.

DCP’s arguments against why the AI could not be an inventor

Because “inventor” is not defined in the Patents Act 1990 (Cth)(Act) the DCP argued that, in accordance with Atlantis Corp Pty Ltd v Schindler (1997) 39 IPR 29, the word is to be given its ordinary English meaning and stated that the dictionary meaning “is a person who invents”.  He also questioned whether allowing machines to be named as inventors would be inconsistent with the other provisions of the Patents Act 1990 (Cth).

The DCP further argued that, should machines be capable of being named as inventors and this be consistent with the legislation, section 15 of the Act does not allow for situations where the inventor is an AI^[2] as:

• in relation to section 15(1)(b) “the law does not presently recognise the capacity of an artificial intelligence machine to assign property”;
• in relation to section 15(1)(c), “the artificial intelligence machine cannot have a beneficial interest in any property”; and
• section 15(1)(d) is “clearly not capable of including the owner of an artificial intelligence machine”.^[3]

Dr Thaler’s arguments in favour of the AI being the inventor

Although Dr Thaler accepted that DABUS cannot own or assign a patent,^[4] he argued that he falls within section 15(1)(b) of the Act as this section has been applied in cases where an employer and employee do not have a contract in place setting out the employer’s entitlements when an employee invents something in the course of their employment.^[5]  He also argued that, in any case, he falls within section 15(1)(c) of the Act as DABUS does not need to be able to legally assign the invention in order for Dr Thaler to derive title from DABUS.^[6]

Decision of the Federal Court of Australia

In rejecting the DCP’s arguments, Beach J stated that there is no specific law requiring the inventors to be human and noted that “inventor” is an agent word much like “computer”, “regulator” or “distributor” and can, therefore, be either a person or an object.^[7]

Referring to the object of the Act set out in section 2A, Beach J stated that, regardless of whether the invention is made by a human or an AI, the term “inventor” should be read in a way that promotes “technological innovation and the publication and dissemination of such innovation by rewarding it”.^[8]

Further to the above, excluding a class of inventions from patentability because that exclusion is not apparent in the express words of the Act would not promote innovation.^[9]

Regarding section 15(1)(b) of the Act, Beach J drew a distinction between “inventor” and “owner”.  As the owner, programmer and operator of DABUS, the invention was made for Dr Thaler making him the owner and falling within section 15(1)(b) of the Act as he would be entitled to have the granted patent assigned to him in accordance with property law.^[10]

In relation to section 15(1)(c) of the Act, Beach J agreed that DABUS cannot legally assign the invention but went on to say that Dr Thaler can still derive the title from DABUS when the invention comes into his possession.^[11]  The combination of his:

• being in possession of DABUS;
• ownership of the copyright in DABUS’ source code; and
• ownership and possession of the computer which operates DABUS,

“Dr Thaler is a person who derives title from the inventor”.^[12]

Beach J considered whether allowing AIs to be inventors would be inconsistent with the Act.  Referring to sections 182(3) and 185 which indicate that the inventor would be a person, Beach J held that just because an inventor is to be a person in some parts of the act does not mean that an inventor must be a person for every situation.^[13]

Finally, Beach J pointed out that the explanatory statement relating to the insertion of regulation 3.2C(2)(aa) of the Regulations that was incomplete and there was nothing in the Patent Cooperation Treaty (Washington, 19 June 1970) to say that an inventor in a patent application was required to be a human.^[14]

Takeaways on patent inventorship

This ruling means that, pursuant to section 15 of the Act, a person can apply for a patent and list an AI as the inventor..  If the inventor is an AI, the owner can either be the person:

• entitled to have the patent assigned to them if they own the program and operate the AI; or
• who derives title to the invention through possession of the AI.

Links and further references

Legislation

Patents Act 1990 (Cth)

Patents Regulations 1991 (Cth)

Cases

Atlantis Corp Pty Ltd v Schindler (1997) 39 IPR 29

Thaler v Commissioner of Patents [2021] FCA 879

Other links

Chris Vindurampulle and Patrick Sands, ‘AI can invent – Australia is first to recognise non-human inventorship’ on K&L Gates IP Law Watch (2 August 2021)

Further information about intellectual property law

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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 v Commissioner of Patents [2021] FCA 879, [9].

[2] Ibid, [88].

[3] Ibid, [87].

[4] Ibid, [113].

[5] Ibid, [114].

[6] Ibid, [115].

[7] Ibid, [119] and [120].

[8] Ibid, [124].

[9] Ibid, [132].

[10] Ibid, [167] and [169].

[11] Ibid, [178] and [189].

[12] Ibid, [193].

[13] Ibid, [212].

[14] Ibid, [219].

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