On July 30, 2021, the Federal Court of Australia held, in the case of Thaler v Commissioner of Patents [2021] FCA 89 (Decision), that “an artificial intelligence system” can be recognized as an inventor under the Patents Act 1990 (Cth).

The matter involved a review of the deputy commissioner of patent’s decision to refuse a patent application made under the act.

As part of a patent application, an applicant is required to “provide the name of the inventor of the invention to which the application relates.” (Decision ¶ 1.) In his application, the applicant, Dr. Stephen Thaler, listed an artificial intelligence system (AIS) as the inventor. The deputy commissioner of patents refused the application on the basis that an AIS could not be designated as an inventor under the act. The applicant appealed the decision to the Federal Court of Australia.

Background to the Case

Thaler created an artificial intelligence system called “device for the autonomous bootstrapping of unified sequence” (DABUS). (¶ 2.) As the creator of DABUS, Thaler owns the copyright on DABUS’ source code and the computer on which DABUS operates. (¶ 8.)

When DABUS was created, it was trained by a human to accumulate knowledge. DABUS later transitioned to supervised training, whereby it would generate concepts for “human approval or disapproval.” (¶ 37.) Eventually, DABUS began to operate without supervision and human input. (¶¶ 38–41.) At that point, it could produce outputs on its own, including inventions such as an emergency warning light and a food container. In his submissions, Thaler described DABUS as being able to perceive and think like a human and “mimic aspects of human brain function.” (¶ 42.)

The Federal Court described the invention as “products and methods concerning containers, devices and methods for attracting enhanced attention using convex and concave fractal elements.” (¶ 9.) In his patent application, Thaler listed DABUS as the inventor because the invention arose from one of DABUS’ outputs. (¶ 43.)

The Parties’ Arguments

As the term “inventor” was not defined in the act, the deputy commissioner argued that its ordinary meaning should be used. The deputy commissioner submitted that the meaning of inventor is one that is “inherently human” because a key part of an invention is “human quality of ingenuity.” (¶ 98.) The deputy commissioner considered that if Australia’s Parliament had intended that AIS be recognized, it would have enacted provisions that expressly recognize AIS under the Patents Act. (¶ 101.)

In response, Thaler accepted that DABUS could not “own” or “assign” a patent but submitted that, for the purposes of a patent application, the terms of the act did not preclude DABUS from being listed as an inventor, with Thaler listed as applicant.

The Court’s Findings

In determining whether an AIS could be listed as an inventor, the court considered the relevant provisions of the Patents Act.

First, the court noted that section 15(1) of the act required that a patent be “granted to a person” who is the inventor, would be entitled to having the patent assigned to him or her, derives title to the invention from the inventor, or is the legal representative of a deceased person. (¶ 58.)

The court considered that the term “person” under section 2C of the Acts Interpretation Act 1901 (Cth) includes an individual, a body politic, and a body corporate. Section 29(5) of the Patents Act extended this definition by defining person as including “a body of persons, whether incorporated or not.” (¶¶ 60–62.) The act does not define the term “inventor.”

The court accepted that DABUS is not a “natural or legal person” and is an “artificial intelligence system that incorporates artificial neural networks.” (¶ 8.)

In its reasoning, the court defined artificial intelligence as an artificial neural network “based on mathematical modelling designated to mimic neural networks” (¶¶ 19–21) and “the brain’s major cognitive circuit” (¶ 33). The court accepted that the process involved was similar to neurons in a human brain producing human intelligence. (¶ 21.)

With respect to the term “inventor,” the court considered that the term, which is an agent noun, described an agent that undertakes a particular act (such as a computer, regulator, or dishwasher). Having regard to the fact that an “agent can be a person or a thing,” the court concluded that an AIS, which can be an agent that invents, can therefore “be described as an ‘inventor’” under the Patents Act. (¶ 120.)

The court also noted that there was no specific provision in the act that prevented AIS from being considered as an inventor (¶ 118), and that no “specific aspect of patent law” required a human author under the act (¶ 119). Accordingly, there was no requirement that a human be designated as an inventor in a patent application. (¶ 10.)

Given that the Federal Court’s decision was a review of the procedure involved in an application and the interpretation of the relevant statutory provisions under the act, the court determined that it was not necessary to delve into issues of AIS autonomy or personhood.

Having regard to the object and purpose of the act, the court determined that it would be antithetical to the promotion of innovation to “preclude a class of otherwise patentable inventions . . . on the basis of an exclusion that is not apparent from the express words of the Act.” (¶ 132.)

Notably, the court commented that the objective of the act is to “provide a patent system in Australia that promotes economic wellbeing through technological innovation.” As such, this involved balancing “the interests of producers, owners and users of technology and the public.” (¶ 122.)   

Reactions to the Decision

A number of patent applications were submitted on behalf of Thaler in multiple jurisdictions, including the United Kingdom, the United States, and New Zealand. The Australian decision was the first judicial decision recognizing AIS for the purposes of a patent application. 

Following the decision, law firm Allens, which represented the applicant, stated that the decision will serve as precedent internationally and encourage innovation by allowing for the patent of inventions by AI.

Dr. Mark Summerfield, an Australian patent attorney, considered that the Federal Court’s decision may allow for inventions by machines without the exercise of “human ingenuity, judgment, or intellectual effort” to be patented.

On the question of personhood, Thaler stated that the Federal Court’s decision is evidence that artificial intelligence functions “‘like a conscious human brain.’” The Federal Court did not make a determination on autonomy, however, other than to note that DABUS could be considered as “semi-autonomous” and that Thaler’s classification of the system as autonomous was an “ambitious label.” (¶ 18.)  

Prepared by Nabila Buhary, Law Library intern, under the supervision of Kelly Buchanan, Chief, Foreign, Comparative, and International Law Division II

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