Legal Insights

Thaler and DABUS – Opening the doors for AI inventors

By Anthony Willis & Benjamin Duff

• 02 December 2021 • 6 min read
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We consider the Federal Court’s decision in Thaler v Commissioner of Patents that artificial intelligence can be the inventor of a paten

In brief

  • A judge of the Federal Court has held that under the Patents Act 1990 (Cth) (Act):
    • whilst the applicant for, and grantee of, a patent must be a human
    • the relevant ‘inventor’ can be non-human (i.e. an artificial intelligence (AI) system or a device).
  • The decision shows the impact on the Act of the newly introduced objects clause. It will be used by the courts to aid in interpreting provisions in the Act that are uncertain or ambiguous. This highlights the courts’ growing preference to forgo dictionary definitions and give increasing weight to an objects clause, particularly since the introduction of s 15AA of the Acts Interpretation Act 1901 (Cth) (Interpretation Act).
  • We expect this decision to have a material impact on the pharmaceutical industry, in which machine learning is increasingly being used to achieve faster, more effective and cheaper drug discovery.

Background – Do robots dream of inventing sheep?

The Deputy Commissioner of Patents determined that a patent application naming Dr Thaler’s Device for Autonomous Bootstrapping of Unified Sentience (DABUS) as the relevant ‘inventor’ could not be granted on the basis that the application failed to name a human inventor.

The Deputy Commissioner considered that this did not comply with reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth) (Regulations), which relied on an interpretation of s 15 of the Act that an ‘inventor’ must be human. He held that s 15 of the Act (and therefore reg 3.2C(2)(aa)) was:

'…not capable of sensible operation in the situation where an inventor would be an artificial intelligence machine as it is not possible to identify a person who could be granted a patent.'

Dr Thaler sought judicial review of that decision. Justice Beach set aside the Commissioner’s decision and remitted the matter to be determined in accordance with the Federal Court's judgment.

Decision – Turing test not required for inventors

Justice Beach stated, in response to submissions from the Commissioner of Patents, that:

  • the Commissioner’s position confused the questions of ‘ownership and control of an invention’ with the question of who can be an ‘inventor’
  • the Act does not justify precluding the grant of a patent when there is a non-human inventor, and
  • the Commissioner interpreted the statute incorrectly by reading unnecessary limitations and qualifications into the statute and using dictionary definitions that resort to ‘old millennium usages’ of the word ‘inventor’.

Relevantly, Justice Beach found that:

  • there is no specific provision in the Act that expressly refutes the proposition that an AI system can be an inventor
  • there is no specific aspect of patent law that would drive a construction of the Act as excluding non-human inventors
  • the word ‘inventor’ is not defined in the Act or the Regulations and so has its ordinary meaning. It is an agent noun, and the agent can be a person or a thing
  • like ‘manner of manufacture’, the concept of ‘inventor’ should be flexibly treated and continue to evolve, and
  • the approach to the construction of the Act should be consistent with the recently inserted object clause:

'...to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology… balanc[ing] over time the interests of producers, owners and users of technology and the public.'

Objects of the Act and s 15AA – Recognising the reality of machines

The decision highlights the courts’ growing preference to forgo dictionary definitions and give increasing weight to an object clause, particularly since the introduction of s 15AA of the Interpretation Act. Although Justice Beach did not refer to it, it provides:

'...In interpreting a provision of an Act, the interpretation that would best achieve the purpose or object of the Act (whether or not that purpose or object is expressly stated in the Act) is to be preferred to each other interpretation.'

Justice Beach stated:

'…the object clause should always be considered when construing the legislation whether or not any ambiguity is identified' (at [123])

'…it is consistent with the object of the Act to construe the term “inventor” in a manner that promotes technological innovation and the publication and dissemination of such innovation by rewarding it, irrespective of whether the innovation is made by a human or not' (at [124]).

It was noted that giving an incentive to the development by computer scientists of creative machines is consistent with the aims of s 2A, and that giving AI the label of ‘inventor’ is ‘recognising the reality’ of machines which is consistent with s 2A. Justice Beach warned that:

'...not recognising the reality could produce inefficiency if not logical difficulties, which would be the antithesis of the s 2A object' (at [129]).

Accordingly, while the Commissioner argued that the 'patent system will reach a breaking point' if computer-generated inventions and patent applications are accepted, the Court held that the outcome of the Commissioner's position is incompatible with s 2A as, under the Commissioner's logic, there would be no inventor, and an application could not be made regardless of the inventive step.

Looking to the future – AI as the fountain of knowledge?

It is unlikely that this is the beginning of Skynet, noting that the Commissioner has appealed the decision to the Full Court. However:

  • Justice Beach clearly indicated that words must be defined in the context of current technology and the realities of the modern world, rather than relying on outdated and restrictive written definitions of the ‘old millennium’
  • when machine learning is increasingly used to achieve faster, more effective and cheaper inventions (such as in drug discovery), expect an increase in the applications by, and potential acceptance of, patents with AI inventors, and
  • a human is still required to be the applicant for, and the grantee of, a patent.

By Anthony Willis & Benjamin Duff

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