Federal Court of Australia: While addressing the question of whether Artificial Intelligence Systems can be an inventor for the purposes of the Patent Act 1990 (Cth), Beach J, expressed that:
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 my view, in some cases it may be none of the above. In some cases, the better analysis, which is consistent with the s 2A object, is to say that the system itself is the inventor. That would reflect the reality. And you would avoid otherwise uncertainty. And indeed that may be the case if the unit embodying the artificial intelligence has its own autonomy. What if it is free to trawl the internet to obtain its own input or training data? What about a robot operating independently in a public space, having its own senses, learning from the environment, and making its own decisions? And what about the more exotic, such as a mobile unit on Mars left to its own devices and not seeking instructions from Earth?
It was stated that the Deputy Commissioner of Patents had determined that patent application no. 2019363177 did not comply with Regulation 3.2C(2)(aa) of the Patents Regulations 1001 (Cth) as it required that the applicant must provide the name of the inventor of the invention.
An artificial intelligence system, which has been described as a device for the autonomous bootstrapping of unified sentience (DABUS), was named as the inventor by the Applicant – Dr Stephen Thaler.
But the Deputy Commissioner determined that such a system could not be an inventor.
Applicant submitted that Section 15 does not preclude an artificial intelligence system being treated as an inventor. Infact., Deputy Commissioner misconstrued Section 15(1), and the Act and the Regulations more generally, as being inconsistent with an artificial intelligence system being treated as an inventor.
Question for Consideration:
Whether an “inventor” for the purposes of the Act and the Regulations can be an artificial intelligence system?
Deputy Commissioner held that an artificial intelligence system can invent something that satisfies all of the requirements of patentability in terms of novelty, inventiveness and utility, but such an invention will be unpatentable because the Act requires a human inventor.
Dr Thaler is the owner of copyright in DABUS’s source code. He is also the owner, is responsible for and is the operator of the computer on which DABUS operates. But Dr Thaler is not the inventor of the alleged invention the subject of the application. The inventor is identified on the application as “DABUS, The invention was autonomously generated by an artificial intelligence”. DABUS is not a natural or legal person. DABUS is an artificial intelligence system that incorporates artificial neural networks.
In Court’s opinion, the artificial intelligence system can be an inventor for the following reasons:
First, an inventor is an agent noun; an agent can be a person or thing that invents.
Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is an inventor.
Third, nothing in the Act dictates the contrary conclusion.
In view of the above-stated reasoning, the Court rejected the Deputy Commissioner’s position.
Federal Court opined that no specific provision in the Act has been provided that expressly refutes the proposition that an artificial intelligence system can be an inventor.
Further, no specific aspect of patent law, unlike copyright law involving the requirement for a human author or the existence of moral rights, that would drive a construction of the Act as excluding non-human inventors.
Adding to the above, Court stated that the word “inventor” is not defined in the Act or the Regulations, it has its ordinary meaning. In this respect then, the word “inventor” is an agent noun. In agent nouns, the suffix “or” or “er” indicates that the noun describes the agent that does the act referred to by the verb to which the suffix is attached. “Computer”, “controller”, “regulator”, “distributor”, “collector”, “lawnmower” and “dishwasher” are all agent nouns. As each example demonstrates, the agent can be a person or a thing. Accordingly, if an artificial intelligence system is the agent which invents, it can be described as an “inventor”.
In considering the scheme of the Act, it has been said that a widening conception of “manner of manufacture” is a necessary feature of the development of patent law in the twentieth and twenty-first centuries as scientific discoveries inspire new technologies” (D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at  per French CJ, Kiefel, Bell and Keane JJ). Court saw no reason why the concept of “inventor” should not also be seen in an analogously flexible and evolutionary way. After all the expressions “manner of [new] manufacture” and “inventor” derive from the 21 Ja 1 c 3 (Statute of Monopolies) 1623 (Imp) s 6. There is a synergy if not a symmetry in both being flexibly treated. Indeed, it makes little sense to be flexible about one and not the other. Tension is created if you give flexibility to “manner of manufacture” and then restrict “inventor”. You would be recognising an otherwise patentable invention and then saying that as there is no inventor it cannot be patented.
The approach to the construction of the Act should be consistent with the recently inserted object clause. The object clause in Section 2A is expressed in the following terms:
The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.
Further, machines have been autonomously or semi-autonomously generating patentable results for some time now. So, and consistently with Section 2A, you are simply recognising the reality by according artificial intelligence the label of “inventor”
Court stated that, whilst DABUS, as an artificial intelligence system, is not a legal person and cannot legally assign the invention, it does not follow that it is not possible to derive title from DABUS. The language of s 15(1)(c) recognises that the rights of a person who derives title to the invention from an inventor extend beyond assignments to encompass other means by which an interest may be conferred.
In light of the present matter, Bench observed that there is a prima facie basis for saying that Dr Thaler is a person who derives title from the inventor, DABUS, by reason of his possession of DABUS, his ownership of the copyright in DABUS’ source code, and his ownership and possession of the computer on which it resides.
Possibilities for patent ownership of the output of an AI System
There are various possibilities for patent ownership of the output of an artificial intelligence system.
First, one might have the software programmer or developer of the artificial intelligence system, who no doubt may directly or via an employer own copyright in the program in any event.
Second, one might have the person who selected and provided the input data or training data for and trained the artificial intelligence system. Indeed, the person who provided the input data may be different from the trainer.
Third, one might have the owner of the artificial intelligence system who invested, and potentially may have lost, their capital to produce the output.
Fourth, one might have the operator of the artificial intelligence system.
In the present case, it would seem that Dr Thaler was the owner.
Generally, on a fair reading of Sections 15(1)(b) and 15(1)(c), a patent can be granted to a legal person for an invention with an artificial intelligence system or device as the inventor.
Firstly, the Court noted that the name of the inventor can be non-human.
Secondly, if the Commissioner would have it that regulation 3.2C(2)(aa) required the name of a human inventor, that is not what the Act mandates. Accordingly, if the Commissioner was correct, Bench would read down the regulation to avoid it being ultra vires, so that in effect it reads “the name of a human inventor(if applicable)”.
Thirdly, the Deputy Commissioner ought not to have used subordinate legislation to summarily rule out a substantive consideration and examination of Dr Thaler’s application in circumstances where:
(a) Dr Thaler was a valid applicant;
(b) prima facie his application is not said not to disclose a patentable invention;
(c) no other difficulties with his application have been identified;
(d) the question of grant is some years away; and
(e) it cannot be said now that Dr Thaler could not later bring himself within Section 15(1)(b) and/or Section 15(1)(c) in terms of being entitled to a grant.
In summary, it was held that an inventor as recognised under the Act can be an artificial intelligence system or device. But such a non-human inventor can neither be an applicant for a patent nor a grantee of a patent.
In view of the above discussion, the Deputy Commissioner’s determinations were set aside and the matter was remitted for reconsideration.[Thaler v. Commissioner of Patents  FCA 879, decided on 30-07-2021]
Advocates before the Court:
Counsel for the Applicant: Mr D Shavin QC with Ms C Cunliffe
Solicitor for Applicant: Allens
Counsel for the Respondent: Mr H P T Bevan
Solicitor for the Respondent: Australian Government Solicitor