The Federal Court of Australia handed down its decision in Thaler v Commissioner of Patents  FCA 879 on 30 July 2021. As a result, The Honourable Justice Beach over-turned the decision of the Australian Patent Office. Hence, they found that an artificial intelligence (AI) system named DABUS could be the inventor of an Australian patent. Subsequently, this case is part of a multi-jurisdictional test case being heard around the world, with this decision coming just days after the South African Patent Office proceeded to issue the patent.
Prior to this decision, it was thought that the Australian Patents Act 1990 (Cth) (the Act) did not allow for AI inventors on the basis of section 15 of the Act. This sets out the persons to whom a patent may be granted. However, the position under the Act was far from clear given the lack of definition for “inventor”.
However, the issue with inventorship in this space is that if answered literally, there would a gap in protection. In some countries, it is illegal to identify oneself as an inventor if one did not conceive the invention. Whereas, if an AI system is the inventor or if there is no claim to inventorship, then in many countries, the patent would not be valid. Where AI systems are being created to offer novel and inventive creations in an efficient manner, it is proposed that a reward should be granted via a patent monopoly.
Specifically, the invention concerned is for a food container and devices and methods for attracting enhanced attention. The sole contributor to the invention was DABUS, an AI system which includes AI programs written by Steven L. Thaler. The AI was “trained” with general knowledge, and proceeded to create the invention independently, including identifying it as novel.
Moreover, Dr Thaler applied for AU patent no. 2019363177 for the food container and related methods on 17 September 2019 via the Patent Cooperation Treaty. The Australian Patents Office rejected this application on 9 September 2020 for failure to meet the formalities requirements. This was decided on the basis that the inventor was not a natural person. Furthermore, that decision was then heard before a delegate of the Deputy Commissioner of Patents.
The Delegate upheld the finding on 9 February 2021. They held that the application had lapsed for failure to achieve acceptance. Due to, section 15(1) of the Act is inconsistent with an AI being treated as an inventor. The Delegate worked through issues such as what it means to be an inventor and whether an AI system has the means to assign ownership to the Applicant. Whilst finding that DABUS was not able to be stated as the inventor, the Delegate held that Dr Thaler is simultaneously not the inventor, given he asserts that he did not devise the invention.
In conclusion, the Delegate found that the deficiency had not been corrected and is not capable of being corrected, therefore this application must lapse. Prior to the Appeal, this identified the gap in protection for AI created inventions in Australian law.
The decision in Stephen L. Thaler  APO 5 was appealed to the Federal Court of Australia. Justice Beach ordered that the determination of the Delegate be set aside, reviving this patent application.
This was based on three primary reasons:
- An “inventor” is an agent noun, which refers to a person or thing that invents;
- Granting protection reflects and remedies the gap in protection for many otherwise patentable inventions where it cannot sensibly be held that a human is the inventor; and
- Nothing in the Act expressly dictates a contrary conclusion.
His Honour reiterated section 2A of the Act, being the objects of the Act to promote “economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.”
Having regard to these objects, it would be incorrect to construe the relevant sections so narrowly and introduce a barrier which was not expressly provided by legislators.
His Honour elaborated on the benefits of AI in the pharmaceutical industry, referring to the ease in applying, creating and repurposing compounds by AI systems, in addition to the ability of AI systems to support clinical trials and upkeep databases. The vast benefits in the pharmaceutical industry can be multiplied to other industries. If no protection is granted for these outputs, Justice Beach concludes that it would inhibit innovation in the field of computer science and other scientific fields which benefit from the use of AI.
The argument of the Commissioner of Patents was rejected by distinguishing between the inventor and patentee. His Honour found that there is no human inventorship requirement and that Dr Thaler’s right to be granted the patent arose pursuant to either section 15(1)(b), being on the basis of Thaler as owner, programmer and operator of DABUS, or section 15(1)(c), where he derived his proprietary rights through possession. In this regard, there need not be any formal assignment document from the inventor.
This decision provides clarity on the position of Australia’s p-AI-tent system: AI systems can be inventors!
This means that individuals and businesses can invest in AI systems which have the ability to create and invent, without fear of losing out on patent protection (in Australia and South Africa, for the moment). We note that if applying for an AI invented patent, the AI system can only be listed as an inventor, i.e. the AI system cannot be the patentee, controller or owner of the patent.
Whilst this case has cleared up the position in the Australian patents system, we note that the position in Australian copyright and design law remains muddy. The position in Australian copyright law will be discussed in a further article, which we will release shortly.
 Stephen L. Thaler  APO 5.
 Thaler v Commissioner of Patents  FCA 879, .
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