An Australian judge holds that an artificial intelligence system can be an inventor under the Patents Act 1990

2021-07-30Australia

Thaler v Commissioner of Patents [2021] FCA 879 (Federal Court of Australia, Beach J, 30 July 2021), VID 108 of 2021, setting aside the Deputy Commissioner's determination on Australian patent application no. 2019363177

Stephen Thaler sought judicial review of a determination by the Deputy Commissioner of Patents that his national phase application no. 2019363177 had lapsed because it named as inventor DABUS, an artificial intelligence system, rather than a person. The application claims containers, devices and methods for attracting enhanced attention using convex and concave fractal elements. The judgment records at paragraph 8 that Thaler owns the copyright in the DABUS source code, owns, is responsible for and operates the computer on which it runs, and is not the inventor of the alleged invention. Justice Beach held at paragraphs 10 and 11 that an artificial intelligence system can be an inventor for the purposes of the Patents Act 1990 (Cth), because an inventor is an agent noun and an agent can be a person or a thing, and because nothing in the Act expressly refutes the proposition. At paragraph 12 the court held that only a human or other legal person can be an owner, controller or patentee. On entitlement, the court held at paragraphs 177 and 189 that Thaler prima facie falls within section 15(1)(c) because, by deriving possession of the invention from DABUS, he derived title. The determinations were set aside and the matter was remitted to the Deputy Commissioner to be determined according to law.

What it changesThis is the first court anywhere to accept a machine as a named inventor, and the reasoning does not travel. It rests on an Act with no definition of inventor and an object clause favoring the promotion of technology. The United States Patent Act defines an inventor as an individual in Section 100(f) of Title 35 of the United States Code and requires each individual inventor to execute an oath, so nothing about United States practice changes: every application needs a natural person who conceived the claimed subject matter, and the inventorship record should name that person and describe what the model did. The judgment is a single-judge decision open to appeal to the Full Court. For a company with a machine-generated invention and an Australian filing, the practical choice is whether to name the machine in one country and humans everywhere else, and the answer is no, because inconsistent inventorship records across a family are an invitation to an entitlement challenge in every jurisdiction that examines the question.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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