After hearing the oral arguments, the High Court of Australia refused Dr Stephen Thaler’s application for special leave to appeal. The Full Court’s decision stands, an artificial intelligence system (AI) cannot be an “inventor” of a patent.
On 11 November 2022 three High Court judges refused the special leave to appeal from the Full Court of the Federal Court’s decision with costs. Making, as it stands now, an Australian landmark case in the area of computer implemented inventions. The relevant transcript is available and may be accessed here.
Regulation 3.2C of the Patents Regulations 1991 (Cth) requires that a patent application needs to name an inventor. This is relevant to ownership under s 15 of the Patents Act 1990, as to whom a patent may be granted.
Dr Thaler was the creator of the AI system, DABUS, ‘Device for the Autonomous Bootstrapping of Unified Sentence’. In 2019, a patent application listing DABUS as the inventor of the patent was filed under the Patent Cooperation Treaty (PCT). However, this was rejected by the Australian Commissioner of Patents. An appeal against this decision to the Federal Court was successful at first instance. Justice Beach found in favour of Dr Thaler, that an AI system was not precluded as being the inventor of a patent under the Patents Act.
The Commissioner then appealed to the Full Court. Justice Beach’s finding was overturned on 13 April 2022. The Full Court found that:
‘Only a natural person can be an inventor for the purposes of the Patents Act and Regulations. Such an inventor must be identified for any person to be entitled to a grant of a patent under ss 15(1)(b)-(d)’.
The Full Court’s decision was upheld by the High Court of Australia. This decision currently stands.
Justice Beach formulated his argument on the basis that “inventor” is an agent noun, which ‘can be a person or a thing’. With this, he drew a distinction with a person entitled to a patent grant under the relevant Act. Importantly, he considered that in the past, “inventor” may denote a person, yet with the advancement of technology, ‘now the term may be used to describe machines which can carry out the same function’.
The Full Court of the Federal Court, however, reasoned using an orthodox approach. The ordinary English meaning of “inventor” is ‘the person who makes or devises the process or product’. In considering the language of the Patent Act and history of the law, the relevant ‘person’ could only be a natural person.
It is important to note that the case was advanced on a set of “agreed facts”, these included that DABUS autonomously generated the invention. It is provided under s 191 of the Evidence Act 1995 that the parties agree those facts are undisputed, evidence is not needed to prove its existence, and ‘evidence may not be adduced to contradict or qualify an agreed fact’.
Justice Gleeson in the High Court questioned:
‘Mr Shavin has made it fairly clear that [Dr Thaler] does not wish to contend that he is the inventor. So, the proposition that he is the inventor is going to have to be propounded by someone. Would that be [the Commissioner of Patents]?’
This was ultimately answered in the negative, bearing the agreed facts. Various authorities contend that it appears the High Court was not interested in abstract discussions of machine inventor-ship. As pointed out by Sophie Goddard, appearing for the Commissioner of Patents:
‘The question whether an artificial intelligence system can be an inventor is one which has been self-generated by this applicant worldwide, so far without much success. To create a test case, we would say, out of a theoretical question of law and promote that worldwide does not elevate the question to a matter of public importance…’
The stance of Australian courts is in line with international authorities where patent applications naming DABUS as an inventor have been rejected, including in Taiwan and Germany. Nonetheless, it is important to note that the courts base their decisions by interpreting legislation. As such, following further lobbying efforts, we may see the legislature making amendments to the law, especially with the dramatic rise in AI platforms that recent years have seen.