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Scratch that: Australian Full Federal Court finds that AI systems CANNOT be inventors

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On 30 July 2021, the Federal Court of Australia over-turned the decision of the Australian Commissioner of Patents, and instead found that an artificial intelligence (AI) system named DABUS could be the inventor of an Australian patent.

BUT on 13 April 2022, the Full Federal Court reverted back to the outcome reached by the Commissioner of Patents, holding that AI-system DABUS cannotbe considered the inventor of a patent for the purpose of the Patents Act 1990 (Cth) (the Act).

What did the Full Court consider in their decision?

The Full Court looked to the history of Australian patent law and case law addressing inventorship and noted that these cases did not consider whether the inventor needs to be a human inventor, but found that it is clear from the decisions on entitlement to be granted a patent that the invention should arise from the mind of a natural person or persons.[1]

The Full Court reiterated the policy foundations of intellectual property law, being an exchange of intellectual property rights (ie. the reward) for the full disclosure and subsequent free use of the intellectual property in question (ie. the cost). In this regard, the Full Court noted that “a person’s entitlement to that reward is closely linked to the act of invention by the true and first inventor.”[2]

Turning to the delicate point of whether it is possible for a legal person (which includes registered companies) to derive entitlement to the grant of a patent from a non-human inventor, the Full Court held that it is not possible for a non-legal person (ie. AI) to invent or legally assign any rights to ownership to a legal person. In short, “there must be a legal relationship between the actual inventor and the person first entitled to the grant,”[3] which AI simply cannot give due to its lack of legal personality.

What does this mean for AI and patent law moving forward?

The Full Court held that its role is to consider the correct interpretation of the Act in light of the facts and evidence before it. In this regard, the alleged inventor was not validly stated by the Applicant.

Following this finding, the Full Court went on to make a few observations, as follows:

  • the role of AI in Australian society is growing and this creates complexities in terms of whether any IP protection will be afforded for the output of AI, who will own it, and how the law will may be updated to reflect the societal values on this point;[4]
  • the case before it only considered whether DABUS could be the inventor (it was an agreed fact that Dr Thaler was not the inventor), and did not consider whether a natural person could be deemed inventor of the DABUS produced invention;[5] and
  • whilst this decision mirrors many sentiments contained in the UK equivalent decision, this decision was reached solely in regard to statutory interpretation of the Australian Act.[6]

Could this result change?

Dr Thaler may seek special leave to appeal this decision to the High Court of Australia, however this is an uncertain avenue for recourse, particular given that the Full Court handed down its decision in a joint judgment of the Honourable Chief Justice Allsop, and Justices Nicholas, Yates, Moshinsky and Burley.

The next point of uncertainty is whether the legislature will step in and change the law to allow for AI inventorship (if this is something which accords with Australian policy).

For businesses and individuals using AI, this means that the position on AI inventorship is uncertain. This case did not decide whether a person could be named inventor of the DABUS produced invention, which we imagine would be a question of degree and fact.

At this stage, parallels could be drawn from the position in Australian copyright law, being that protection is only granted to the human author where the user of the AI has sufficiently contributed to the work as it appears in material form.

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[1] Commissioner of Patents v Thaler [2022] FCAFC 62, at [105].

[2] Commissioner of Patents v Thaler [2022] FCAFC 62, at [88].

[3] Commissioner of Patents v Thaler [2022] FCAFC 62, at [107].

[4] Commissioner of Patents v Thaler [2022] FCAFC 62, at [119].

[5] Commissioner of Patents v Thaler [2022] FCAFC 62, at [121].

[6] Commissioner of Patents v Thaler [2022] FCAFC 62, at [122].

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