“Only a human or other legal person can be an owner, controller or patentee. That of course includes an inventor who is a human. But it is a fallacy to argue from this that an inventor can only be a human.” – Justice Beach
The Federal Court of Australia on Friday ruled in Thaler v Commissioner of Patents  FCA 879 that an artificial intelligence (AI) system can be an inventor under the Australian Patents Act.
The Honorable Justice Beach, in a very thorough judgment, set aside the decision of the Deputy Commissioner of Patents that patent application no. 2019363177 did not comply with reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth), which “requires that the applicant, who in this case is Dr Stephen Thaler, must provide the name of the inventor of the invention to which the application relates.”
The Deputy Commissioner of Patents said that Thaler could not name an inventor because the inventor he had named, the AI system DABUS, simply cannot be an inventor under the Act. But Justice Beach said “that position confuses the question of ownership and control of a patentable invention including who can be a patentee, on the one hand, with the question of who can be an inventor, on the other hand.” He continued:
Only a human or other legal person can be an owner, controller or patentee. That of course includes an inventor who is a human. But it is a fallacy to argue from this that an inventor can only be a human. An inventor may be an artificial intelligence system, but in such a circumstance could not be the owner, controller or patentee of the patentable invention.
The Deputy Commissioner, and the Commissioner in supporting arguments, had taken the view that, since “inventor” is not defined in the Act, its “ordinary English meaning” should apply, and “the ordinary meaning of ‘inventor’ is inherently human,” wrote Justice Beach, explaining the Commissioner’s view.
Justice Beach in his analysis made six general observations:
- There is no provision that expressly refutes AI as an inventor.
- Unlike copyright law, patent law does not require a human author or the existence of moral rights.
- The word “inventor” is an agent noun, in which “the suffix ‘or’ or ‘er’ indicates that the noun describes the agent that does the act referred to by the verb to which the suffix is attached. “Computer”, “controller”, “regulator”, “distributor”, “collector”, “lawnmower” and “dishwasher” are all agent nouns. As each example demonstrates, the agent can be a person or a thing.Accordingly, if an artificial intelligence system is the agent which invents, it can be described as an ‘inventor’”.
- Like other areas of patent law, such as the term “manner of manufacture,” the concept of “inventor” should be flexible and capable of evolution. Justice Beach wrote: “There is a synergy ifnot a symmetry in both being flexibly treated. Indeed, it makes little sense to be flexible about one and not the other. Tension is created if you give flexibility to “manner of manufacture” and then restrict “inventor”. You would be recognising an otherwise patentable invention and then saying that as there is no inventor it cannot be patented.”
- The Commissioner should have construed the Act in line with the “recently inserted object clause”, which reads:
The object of this Act is to provide a patent system in Australia that promotes 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.
- The Act is really focused on the concept of “inventive step” and not the requirement of an inventor at all. Justice Beach wrote: “There is nothing in ss7(2) and 18(1) requiring an ‘inventor’ as such, let alone only an inventor who is a legal person. There is no ground of invalidity based upon the absence of any ‘inventor’, let alone the absence of an inventor who is a legal person. Further, there is nothing in s 40 that makes ‘inventor’ and an inventor who is a legal person of any relevance.”
Australia does not have automatic substantive examination; an applicant must request examination within five years after filing a patent application for a standard patent. Since the application is only at the formalities stage of the process, Justice Beach said, “the only requirement is that an inventor be named.”
The ruling marks the second win for DABUS in the last week. South Africa’s patent office granted the first patent for an invention conceived by an AI inventor, DABUS. The country does not have a substantive patent examination system, however.
As a result of Justice Beach’s opinion, the Deputy Commissioner’s determinations are set aside and the patent office will reconsider the application in accordance with the court’s analysis.
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