Australia's Full Federal Court reverses and holds that only a natural person can be an inventor

2022-04-13Australia

Commissioner of Patents v Thaler [2022] FCAFC 62 (13 April 2022) (Allsop CJ, Nicholas, Yates, Moshinsky and Burley JJ), allowing the appeal from Thaler v Commissioner of Patents [2021] FCA 879 (Beach J)

The Full Court of the Federal Court of Australia unanimously allowed the Commissioner's appeal and held that an artificial intelligence system cannot be named as inventor on an Australian patent application. Stephen Thaler's Australian national phase application No. 2019363177, from a PCT application, named his system DABUS as inventor. The Deputy Commissioner had found that the application therefore did not comply with regulation 3.2C(2)(aa) of the Patents Regulations 1991, which requires the inventor's name, and the primary judge, Beach J, had set that decision aside in July 2021 on the ground that an inventor under the Patents Act 1990 can be an artificial intelligence system. The Full Court read "inventor" in the regulation as carrying its meaning in section 15(1) of the Act and concluded at [113] that "Only a natural person can be an inventor for the purposes of the Patents Act and Regulations." A patent may be granted only to the inventor or someone claiming through the inventor, and "Something without a legal identity cannot give effect to an assignment." The Court said at [119] that whether an inventor should be redefined to include an artificial intelligence is a policy question, and at [121] that whether this application has a human inventor "has not been explored in this litigation and remains undecided." The orders of 30 July 2021 were set aside, with no order as to costs.

What it changesAustralia was the one major jurisdiction where a court had accepted a machine as a named inventor, and that position is gone; with the United Kingdom Court of Appeal, the Legal Board of Appeal of the European Patent Office and the Eastern District of Virginia already against Thaler, a worldwide filing program can run a single inventorship rule and name the natural persons who conceived the claims in every country. Any Australian filing that still carries an alternative inventor designation should be corrected before the application lapses, and the entitlement chain should run from a human inventor. For machine learning inventions the real work is in the invention disclosure: record which engineer chose the architecture, the training objective, the data pipeline and the evaluation that the claims rest on, because the Full Court left open whether a human was the inventor of DABUS's output, and that is the question an examiner or an opponent will now ask.

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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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