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5.4.3 Inventions Produced by Artificial Intelligence

Date Published

Overview

The use of artificial intelligence (AI) in research and development has not raised a significant issue for the patent system. Generally, AI has been viewed as a tool to assist researchers in the inventive process.

Most 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.

This section provides guidance on the current state of the law in Australia on inventions produced by AI machines.

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 (that is, legal persons).

The assumption that an inventor must be a person or persons was recently challenged in a patent application by Dr Stephen Thaler. The Thaler application listed the inventor as DABUS, an AI machine. At the outset the Deputy Commissioner of Patents objected to the application as failing formalities because it did not list an actual inventor (that is, a person). This approach was upheld by a delegate of the 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 is was ‘agent noun’ and therefore includes 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 affirms the Commissioner’s view that for the purposes of the Patents Act 1990, according in particular with s15 of the Act, an inventor named on a patent application must be a natural person, or persons.

AI-produced ‘inventions’ – who is entitled?

Consideration of the Thaler case also raised the question as to whether Dr Thaler, who was named as an applicant, could be properly entitled to the invention produced by DABUS.

The delegate held that the AI machine was incapable of properly transferring the rights to Dr Thaler, as the operation of s15 of the Act requires transfer from one legal person to another legal person.

The Federal Court also overturned this position. In reaching its decision the court relied on a legal principle of ‘possessive title’. This was summarised at paragraph 189 as follows:

"In my view, Dr Thaler, as the owner and controller of DABUS, would own any inventions made by DABUS, when they came into his possession. In this case, Dr Thaler apparently obtained possession of the invention through and from DABUS. And as a consequence of his possession of the invention, combined with his ownership and control of DABUS, he prima facie obtained title to the invention. By deriving possession of the invention from DABUS, Dr Thaler prima facie derived title. In this respect, title can be derived from the inventor notwithstanding that it vests ab initio other than in the inventor. That is, there is no need for the inventor ever to have owned the invention, and there is no need for title to be derived by an assignment."

This matter was also appealed to the Full Federal Court, who upheld the original delegates position that the AI machine was incapable of properly transferring the rights, as the operation of s15 of the Act requires transfer from one legal person to another legal person.

The High Court recently refused special leave to appeal (see Thaler v Commissioner of Patents [2022] HCATrans 199 (11 November 2022)) thereby affirming the decision of the Full Federal Court.  

Amended Reasons

Amended Reason Date Amended

Published for testing
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