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5.4.3 Artificial Intelligence - Inventorship and Entitlement

Date Published

Overview

The use of artificial intelligence (AI) in research and development has increased markedly in recent years and raises a range of questions and potential challenges for patent law.  Notably, recent cases across the globe led to questions about whether AI machines can be inventors and who may be granted a patent to an invention that is the product of an AI algorithm.  
 
Under Australian Law an inventor is someone who invents.  They must be a natural person and cannot be a legal recognised entity such as a corporation, or Artificial intelligence. 

Can AI be an inventor?

The word ‘inventor’, meaning ‘someone who invents’, has long been considered to refer to a natural person.  Under the Act, this is normally assumed to be an individual or a group of individuals.  This is distinct from legal persons such as corporations and bodies politic (e.g. universities etc) which can be named as applicant but cannot be listed as inventors for the purposes of the Act. 

The assumption that an inventor must be a person or persons was challenged in a patent application filed by Dr Stephen Thaler.  The Thaler application listed the inventor as “DABUS, The invention was autonomously generated by an artificial intelligence”.  The application was deemed to have not met the necessary formality requirements because it did not list an actual inventor (that is, a person) in accordance with regulation 3.2C(2)(aa) and s15 of the Act.  This approach was upheld by the Deputy Commissioner in Stephen L Thaler [2021] APO 5. 

The Deputy Commissioner's decision was overturned by the Federal Court in Thaler v Commissioner of Patents (2021) FCA 879.  The judge accepted the view that the term ‘inventor’ within the Act is not strictly limited to a person – he considered this to be an ‘agent noun’ and therefore included both a person and a thing that invents. 

The matter was appealed by the Commissioner to the Full Federal Court (Commissioner of Patents v Thaler (2022) FCAFC 62), who unanimously found in favour of the Commissioner, allowing the appeal. The decision affirmed the Commissioner’s view that an inventor named on a patent application must be a natural person, or persons. 

Dr Thaler filed a special leave application with the High Court to appeal the Full Federal Court decision.  The High Court refused special leave  (see Thaler v Commissioner of Patents [2022] HCATrans 199 (11 November 2022)).   

The Full Court finding therefore represents the current state of the law regarding AI inventorship.  In that judgement their Honours turned to the various provisions of the Patents Act and historical cases relevant to the question of inventorship and entitlement to generally note that in all these contexts, an inventor has always been considered to be a natural person or persons, and that a fundamental tenet of the patent system is “the reward” that is provided in the form of the grant of a patent for public disclosure of an invention (see [88]).  They note at [100] that: 

‘“Inventor” has long been held to bear its ordinary English meaning, being the person(s) responsible for making the invention, namely, “the person who makes or devises the process or product”: JMVB Enterprises at [71]-[72]; Atlantis Corporation v Schindler [1997] FCA 1105; 39 IPR 29 at 54 (Wilcox and Lindgren JJ).’” 

The Full Court noted at [101] that: 

 “The inventor for the purposes of s15(1)(a) is the person who is responsible for the “inventive concept”” 

and at [102]: 

“Identification of the inventor within s15(1) is of central relevance to the operation of the Patents Act and is intertwined with concepts material to the validity of patent applications and patents”.   

They concluded at [107]: 

“On a natural reading of s15(1), each of ss15(1)(b), (c) and (d) provide for circumstances where a person becomes entitled to the grant of a patent by ultimately receiving that entitlement from the inventor in s15(1)(a). Put another way, there must be a legal relationship between the actual inventor and the person first entitled to the grant. That was the construction adopted by the Full Court in Stack which, after reviewing many of the historical matters to which we refer above, concluded at [21] that “[a] patent may only be granted to the inventor or somebody claiming through the inventor”, a proposition with which we respectfully agree. Such a construction is also consistent with the broad statement as to the intended effect of s15 provided in the Explanatory Memorandum” 

Thus, the Thaler judgement makes clear that the meaning of “inventor” for the purposes of the Patents Act, is a person who invents.  Any inclusion of a non-human as an inventor in a patent application will contravene the Act (and fail to comply with formality requirements).  It is noted that an automated formality check is undertaken, and rules for this checking are regularly reviewed.  However, examiners should raise issues that they identify during examination and discuss with the Patent Oppositions team if required.   

For detailed discussion of the general principles relating to determination of inventorship involving natural persons please refer to relevant case law on the issue of entitlement at 7.2.8.5 Relevant Law - Entitlement/Inventorship. 

Amended Reasons

Amended Reason Date Amended

Added clarifying paragraph summarising Thaler judgement and providing information regarding formalities checking

Page clarified to reflect current status of law in Australia on AI inventorship.

Published for testing
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