Has the Full Court Artificially Rejected AI Inventorship?
In Commissioner of Patents v Thaler 2022 FCAFC 62 a full bench of the Full Court allowed the Commissioner’s appeal and held that an artificial intelligence system or machine cannot be named as an inventor for a patent.
Dr Thaler created an artificial intelligence system which he called DABUS, being the acronym of ‘Device for Autonomous Bootstrapping of Unified Sentience’. DABUS is capable of autonomously creating product designs. Dr Thaler filed a couple of PCT International phase applications from two such product designs naming himself as the applicant and DABUS as the inventor. Various PCT national phase entries and a European regional phase entry were made from those International phase applications. In each of those jurisdictions so far only the South African patent office has allowed DABUS to remain as the inventor. However, that was on account of South African patent applications not being subject to substantive examination. Since the inventor named in the South African national phase entry matched the inventor named in the PCT International phase application no formality objection arose. All the other patent offices that have examined the applications raised objections that DABUS does not qualify as an inventor on account of not being a natural person. With the exception of the Australian Federal Court’s decision all other patent office tribunal and Court appeals from those examination objections have been rejected.
In the Australian Federal Court decision Justice Beach found there was nothing in the Patents Act 1990 which excluded a non-human artificial device or system from being an inventor. It was further found that as the word “inventor” is not defined in the Act or Regulations it has its ordinary meaning. The primary Judge found the word “inventor” to be an instance of an agent noun, being a verb having the suffix “or” or “er”, thereby indicating that the noun (inventor) describes the agent that does the act (invent). The primary Judge then gave the following examples of other agent nouns where the agent can be a human or a device or system: “computer”, “controller”, “regulator”, “distributor”, “collector”, “lawnmower” and “dishwasher”. In accordance with being an agent noun the word “inventor” can validly be used to describe an artificial intelligence system that invents. The primary Judge went on to consider it apt that the concept ” inventor” should be construed in a flexible and evolutionary way, like has occurred with the concept of “manner of manufacture”. It was also considered that such an interpretation is consistent with the Act’s object of promoting economic wellbeing through technological innovation. Consequently, the primary Judge held that the Deputy Commissioner erred in concluding that the name provided did not comply with the requirements of regulation 3.2C(2)(aa) because it was a legal impossibility for an artificial intelligence machine to be the inventor of an invention.
The Full Court considered the section 15 entitlement provision to be central to the issue of who or what can qualify as an inventor. Section 15(1) states:
15 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).
After giving a historical overview of the role of the inventor in entitlement the Full Court noted that the Explanatory Memorandum to the Patents Bill 1989 stated the effect of section 15 as follows:
Broadly, a patent may be granted only to the inventor of the invention concerned or to a person deriving rights from the inventor.
Whereas the primary Judge considered 15(1)(a)-(d) to be alternatives, the Full Court considered that 15(1)(b)-(d) need to be understood as involving parties having a legal relationship to the person mentioned in 15(1)(a). Thaler claims entitlement from DABUS’s invention via section 15(1)(c). However, the Full Court considered that the word “inventor” in section 15(1)(c) only refers to the inventor mentioned in section 15(1)(a), thereby precluding DABUS from being the inventor mentioned in section 15(1)(c). The Full Court found its construction created no inconsistencies with other provisions in the Act that use the term “inventor” or any other provisions. The Full Court found corroboration for its construction in the High Court’s decision in D’Arcy v Myriad Genetics Inc  HCA 35, which at  stated:
As appears from s 6 of the Statute of Monopolies, an invention is something which involves “making”. It must reside in something. It may be a product. It may be a process. It may be an outcome which can be characterised, in the language of NRDC, as an “artificially created state of affairs”. Whatever it is, it must be something brought about by human action.
As noted therein that references the High Court’s pronouncement in National Resource Development Corporation v Commissioner of Patents  HCA 67 that a manner of new manufacture bring about an artificially created state of affairs. The Full Court considered that in both cases there was an assumption that human agency was required in the development of the invention in suit. Yet that corroboration seems weak or begs the question. As DABUS has shown, making an invention does not require human action for the thing made to be an artificially created state of affairs. By appealing to coherence with the historical understanding of the word "inventor" the Full Court somewhat begs the question and does not adequately respond to the trial Judge's contentions that ”inventor” is an agent noun that should be construed in a flexible and evolutionary way.
Author: Quinn Miller