This is the big question facing the patent industry right now.
What do you think, should it be allowed?
What does the law say?
Inventors who qualify are defined by s 15 of the Patents Act and 3.2C(2)(aa) of the Patent Regulation.
s 15 of the Patents Act – Who may be granted a patent?
(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
(2) A patent may be granted to a person whether or not he or she is an Australian citizen
Patent Regulation 3.2C(2)(aa)
In the UK, the Supreme Court ruled that a patent was invalid where the inventor was artificial intelligence (AI).
The UK Patent Court Decision
A computer scientist, Dr Thaler filed patent applications globally and took the UK Patent Office to court over their refusal to grant patent rights. Thaler had listed the inventor as DABUS, an artificial intelligence machine. The full decision for Thaler (Appellant) v Comptroller-General of Patents, Designs and Trade Marks (Respondent) can be found here.
This is not the first country Court to see a problem with an AI being a patent inventor.
The Australian Patent Office Decisions
In context, “inventors” are defined as “the person who makes or devises the process or product”.
In 2021, Thaler’s Australian patent No. 2019363177 entitled “Food container and devices and methods for attracting enhanced attention” was refused. Thaler took Court action against the Patent Office and initially won. It was held that an artificial intelligence system or device and ordered that the Patent Commissioner’s determinations be dismissed and the patent allowed – see Thaler v Commissioner of Patents [2021] FCA 879; 160 IPR 72 (J) at [226]-[227].
The Patent Office appealed the decision in April 2022. The full decision for Commissioner of Patents v Thaler [2022] FCAFC 62 is here.
Here, the Deputy Commissioner revisited the concept of “inventor” under the Patents Act 1990 (Cth). In particular, does the inventor have to be a natural person? And what is the relationship between the inventor and person entitled to be granted a patent.
Honourable Chief Justice Allsop, and Justices Nicholas, Yates, Moshinsky and Burley held that the Act and Regulations assumed that the inventor had to be a natural person, and supported the Patent Office decision to refuse granting of the rights. Special leave was denied.
Intellectual Property (IP)
The forms of IP we register and advise in are Patents, Trademarks and Designs.
Patent Institute Accreditation
Fellows of the Australian and New Zealand Patent Institute, since 2002.
Some serious questions were raised for future thought:
- “To whom should a patent be granted in respect of its output? The owner of the machine upon which the artificial intelligence software runs, the developer of the artificial intelligence software, the owner of the copyright in its source code, the person who inputs the data used by the artificial intelligence to develop its output, etc?”
- “If an artificial intelligence is capable of being recognised as an inventor, should the standard of inventive step be recalibrated such that it is no longer judged by reference to the knowledge and thought processes of the hypothetical uninventive skilled worker in the field? If so, how? ”
- “What continuing role might the ground of revocation for false suggestion or misrepresentation have, in circumstances where the inventor is a machine?”
It appears as thought Thaler has not yet appealed to the High Court.
