Noel Kim 17 Sep 2021
Is it possible for an AI (Artificial Intelligence) to be an inventor?
- Thaler v Commissioner of Patents  FCA 879
In recent years, the topic of whether AI can be an inventor has been at the forefront of patent laws in numerous countries. Defining the term ‘AI-generated invention’ has triggered a heated discussion over the future of patent law and policy. While it is widely agreed that such discoveries contradict the concept of human inventorship, it is unclear to what extent topics regarding ‘non-human’ creativity are justified. This raises the question of how AI may autonomously create innovations and how AI-generated ideas differ from AI-assisted ideas.
The Australian Federal Court recently handed down the world’s first judgment in Thaler v Commissioner of Patents  FCA 879, acknowledging AI as an inventor under Australian patent law with the broad interpretation of s15(1) of the Act. This advances our understanding of who can be the owner of the ‘solutions’ made accessible by these new technologies and how to utilise artificial intelligence to promote economic wellbeing through technological innovation.
Thaler filed Australian Patent Application No. 2019363177 for ‘Food Container and Devices and Methods for Attracting Enhanced Attention’ on 17 September 2019 by the national entry of the corresponding PCT application.
Thaler created The Device for Autonomous Bootstrapping of Unified Sentience (DABUS) to devise, on its own accord, novel ideas such as enhanced storage beverage containers and ‘neural flame’ for search-and-rescue operations.
Equivalent patent applications have also been filed in 16 countries including Canada, China, Germany, India, Israel, South Africa, the UK, South Korea and the US. However, the European Patent Office refused to examine Thaler’s patent application on 21 December 2019, citing a failure to comply with their requirement that “an inventor designated in the application must be a human being, not a machine.”
Based on the ideology that only natural individuals can be inventors, most countries, including the US, the UK and South Korea, have rejected Thaler’s patent application. So far, the South African Patents Office has only accepted the application but bear in mind that there was no substantive examination prior to this grant in South Africa, Australia is the first jurisdiction to permit a patent invented by a robot creator.
IP Australia’s decision
The Deputy Commissioner of Patents determined that Thaler’s application did not satisfy the requirements under s15 of the Act since the ordinary meaning of the word “inventor,” as defined by numerous dictionaries, is essentially human (natural or legal).
The Deputy Commissioner asserted that the Patent Regulations 1991 (Cth) (Regulations) imply that the term ‘inventor’ refers to a person and that s15(1) of the Act, which specifies who is eligible for a patent, also stipulates that the inventor must be a human. Further, an AI system cannot have a beneficial interest or title in the property, so an AI’s invention cannot be assigned.
Consequently, the Deputy Commissioner rejected Thaler’s patent application since it failed to designate a human inventor. Thaler applied for a judicial review to the Federal Court of Australia.
Federal Court of Australia’s decision
The appeal was heard by Justice Beach, who overturned the Deputy Commissioner’s decisions on 30 July 2021.
Justice Beach noted that neither the Act nor the Regulations explicitly define the term ‘inventor’. The term ‘inventor’ is a noun that acts as an ‘agent,’ which can be a person or a thing. Therefore, claiming that a non-human/non-person cannot be an inventor is a fallacy. Henceforth, DABUS can be referred to as an ‘inventor’ as it satisfies the agent noun component.
Justice Beach queried, ‘If the output of an artificial intelligence system is said to be the invention, who is the inventor? And if a human is required, who? The programmer? The owner? The operator? The trainer? The person who provided input data? All of the above? None of the above?’ In this regard, the Court acknowledged that Thaler owned DABUS’ source code (as the copyright owner of the source code) and the computer on which it was administered. Based on the concept of ‘deriving a title’ extending to assignments and title transfers, Thaler was found to have absolute ownership and control of the computer on which the program runs (i.e. DABUS).
His Honour reached his conclusion based on a combination of legislative interpretation and policy considerations. Justice Beach believes that the term ‘inventor’ should not be interpreted narrowly since doing so would hinder innovation not just in the field of computer science but in all other scientific areas that may benefit from the output of an artificial intelligence’s system. Similarly, His Honour emphasised the fundamental significance of giving effect to the Act’s objective unless its terms or context requires the statutory definition.
Justice Beach added that computer inventorship facilitates and incentivises computer scientists to develop novel inventions, resulting in new scientific advantages. So unlike the copyright law which mandates a human author, the Act does not exclude non-human inventors.
Justice Beach posited in this case that “We are both created and create. Why cannot our own creations also create?”
This significant judgment implies that applications claiming AI as their inventor will no longer be denied on the grounds of failing to name a human inventor. Subsequently, some critics have voiced concerns that granting patent protection to AI-generated inventions may increase the threshold of originality of ‘person skilled in the art,’ making it more challenging for human inventors to obtain patent rights.
Furthermore, allowing AI to be an inventor may encourage humans to create AI systems that undertake innovative activities on behalf of humans. It is worth considering whether this serves the Act’s objective of ‘providing a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology’ (s2A of the Act).
On the other hand, those who favour patent rights for AI-generated ideas believe that the decision will encourage more creation and publication of AI-based breakthroughs. Especially because many pharmaceutical and computer science enterprises and other scientific areas may greatly benefit from an AI system’s output.
IP Australia announced on 30 August 2021 that the Commissioner of Patents has decided to appeal the Federal Court’s decision. So stay tuned for more exciting news.
Written by Noel Kim (Partner) & Lisa Kwak (Paralegal)
Written on 10/09/2021
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