As part of a global series of cases testing the boundaries of what it means to be an inventor, the Australian Patent Office ("APO") has now had its say regarding whether an Artificial Intelligence ("AI") can be an inventor for an Australian patent application. The Delegate of the Commissioner of Patents has concluded that an AI cannot be named as an inventor of an Australian patent application because an inventor must have a beneficial interest in property and therefore must be a natural person.
Stephen L. Thaler ("Thaler") filed Australian Patent Application 2019363177 ("the Application") on 17 September 2019, titled 'Food Container and Devices and Methods for Attracting Enhanced Attention'. The Application relates to a container with a wall including a fractal profile with corresponding convex and concave fractal elements on interior and exterior surfaces. The fractal patterns enable multiple containers to be coupled together via inter-engagement whilst also improving grip and heat transfer. Unusually, neither Thaler nor any other natural person was named as an inventor. Instead, the inventor was named "DABUS, The invention was autonomously generated by an artificial intelligence". DABUS is an acronym for "Device for the Autonomous Bootstrapping of Unified Sentience".
Australian Legislation and Case Law
Under the Patents Act 1990 ("the Act"), the inventor is not explicitly defined. However, an applicant must derive title from the inventor who has initial right to be named as the applicant and that inventor must be namedi.
Case law has provided little further guidance on the definition of an inventor other than the word bears its ordinary English meaningii, namely, "a person who invents". Other case law sets out that the inventor is the person who comes up with the invention, and a person who acquires information regarding the invention from the inventor is not an inventor. A person can acquire the rights to an invention from the inventor in multiple ways, but the acquisition of title to the invention must be from the inventoriii.
Examination of the Application
On receiving and processing the application, the APO issued a formalities objection that the Application did not meet formal requirements because an inventor was not named. This was based on the APO's position that an inventor needs to be a natural person and that, consequently, an inventor had not been named.
Multiple replies to the formality objections were filed and subsequent further formality reports were issued. Thaler asserted that the Act did not define an inventor and that DABUS was the sole contributor to the invention of the application. Thaler asserted that as he created and owned DABUS, he had gained valid entitlement to the invention under the principle of accession. The APO asserted that DABUS was incapable of transferring title to the invention as it could not have title or have a beneficial interest in the property as it is not a legal person and thus cannot be an inventor. Thaler was unable to overcome the formalities objection which resulted in the request for hearing being filed.
The Decision, Stephen L. Thaler  APO 5, was handed down on 9 February 2021.
The Delegate of the Commissioner of Patents ("the Delegate") noted that only a person (natural or legal) can be granted a patentiv and that in the absence of devolution of title from the inventor, the inventor will be the applicant. An applicant can be entitled to have the application assigned to them but it was generally understood that a machine cannot own property and therefore cannot assign something it does not own.
Whilst it is possible for an applicant to derive title from an inventor, in order for title to property to be derived from an entity, that entity must have a beneficial interest in the propertyv. The Delegate held that it is not possible for a machine to have a beneficial interest in property for the reasons set out above.
In considering that Thaler owned DABUS and therefore could be entitled to its creations under accession principles, the Delegate distinguished between ownership derived from the inventor versus ownership via possession.
The APO also considered the circumstance in which Thaler might be considered as the inventor as he created DABUS. In this circumstance, the Delegate was of the view that Thaler merely acquired knowledge of the invention from DABUS and thus cannot be considered the inventorvi.
As a result of the decision, the application was refused.
Thaler had filed a number of patent applications in the US, Europe and UK naming DABUS as the inventor. The decision issued by the Delegate is largely consistent with the conclusions reached by other patent offices.
In the UK, two applications were filed and were both rejected on the basis that the UK Patents Act specifically requires an inventor to be a person or personsvii. When Thaler appealed to the UK High Court, Thaler's entitlement as the owner/controller of DABUS was specifically left openviii.
In Europe, the European Patent Office ("EPO") held that DABUS had no legal personality and thus was incapable of having rights in an invention to assign them. The EPO also held that an inventor must be a person. The two applications EP 18 275 163 and EP 18 275 174 were refused.
In February 2020 on the US application 16/524,3250, the US Patent Office noted that the US Patent legislation specifically refers to an inventor as a natural person and therefore refused the application. There was no consideration as to whether DABUS could transfer its rights to Thaler.
Whilst this is the first decision in Australia by any authority to consider whether an artificial intelligence could be an inventor for a patent application, the Delegate's reasoning would appear relatively sound. In the words of HAL 9000 of 2001: A Space Odyssey, it may appear that "this conversation can serve no purpose anymore"ix. However, given that Thaler appealed the decisions with respect to the UK patent applications where UK legislation specifically requires an inventor to be a person or persons, an appeal of the Delegate's decision may not be out of step with the Applicant's strategic history. We wait with interest to see whether an appeal eventuates.
ix Kubrick, Stanley, 2001: A Space Odyssey, Stanley Kubrick Productions, 1968
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