DABUS: decoding Australia’s AI decision
In a world first judicial decision, Justice Beach of the Federal Court of Australia determined that an AI machine can be named as an inventor on a patent application. The decision, Thaler v Commissioner of Patents, is the first judicial determination in the world permitting a non-person to be named as an inventor. A non-human inventor can still not be an applicant or grantee of a patent—only a natural person or corporation can apply for or be granted a patent.
The availability of patent protection for AI-generated inventions has proven to be a hotly contested and contentious issue around the world. The Australian decision is timely as AI capabilities continue to evolve and impact our everyday lives, raising important legal and philosophical questions. Should inventions created by AI be patentable? Who should be nominated as the inventor of such inventions? Who should own any resulting patents? Given the importance of AI to research and development, the decision will have a significant impact across a range of industries and sectors.
Background
The Device for Autonomous Bootstrapping of Unified Sentience or “DABUS” was invented by Stephen Thaler, founder and chief executive of Imagine Engines. Thaler created DABUS to generate new ideas and determine the most novel or valuable. In some respects, DABUS can be said to mimic aspects of human brain function. Through a complex series of neurocomputing, DABUS, without human assistance, was able to invent a new type of beverage container based on fractal geometry and a device for attracting human attention.
Australia’s Deputy Commissioner of Patents (the Commissioner) rejected Thaler's patent application naming DABUS as the inventor. The Commissioner determined that Thaler's patent application lapsed as it failed to comply with the requirement that the application state the inventor of the invention. In the Commissioner's view, DABUS, a non-human, was unable to satisfy this requirement. Thaler sought judicial review of the Commissioner's decision.
The decision
Prior to his analysis of the legal issues in dispute, Justice Beach explained the importance of AI to pharmaceutical research. His Honour referred to the ways in which AI has been used in the development of vaccines and drug repurposing, finding molecular targets and identifying candidate substances, among other things. Justice Beach said that the above examples indicate that a narrow view should not be taken as to the concept of 'inventor' and to do so would inhibit innovation
In comparison to other jurisdictions, the Patents Act 1990 (Cth) does not define the term 'inventor'. Rather, the term is to have its ordinary meaning.
The Commissioner's primary argument was that the ordinary meaning of 'inventor' is inherently human: “someone who invents, especially one who devises some new process, appliance, machine or article; someone who makes invention”.
Justice Beach disagreed with the Commissioner's contention and considered that there is no specific provision in the act that expressly refutes the proposition that an AI machine can be an inventor. As 'inventor' is not defined in the act, it has its ordinary meaning. The word 'inventor' is an agent noun and the agent can be a person or a thing, such as in the case of a 'dishwasher' or 'computer'.
Justice Beach was also of the view that it is consistent with the object of the act to construe the term 'inventor' in a manner that promotes technological innovation and the dissemination of technology, regardless of whether the innovation is generated by a human or not. Consistent with the object of the act, computer inventorship would incentivise the development of creative machines by computer scientists. Failure to recognise AI inventorship could produce an illogical result because persons not actually responsible for an invention could be recognised and rewarded as the inventor, without having contributed to the inventive process.
Justice Beach also found that recognising AI as inventors is not inconsistent with the act, particularly s 15(1) which specifies who may be granted a patent. Given Thaler's patent application was at the formalities stage, the only question for consideration was whether Thaler had lodged a valid application. It was not yet necessary to consider whether DABUS is an actual inventor and/or whether Thaler is entitled to own the patent.
However, Justice Beach was of the view that, in principle, Thaler is capable of being entitled to be granted a patent for an invention conceived by DABUS, as he derives title to the invention from DABUS through his possession of the invention, combined with his ownership of copyright in DABUS' source code, and his ownership and possession of the computer on which DABUS resides.
Implications
A few days prior to the Australian decision being handed down, a South African patent was granted naming DABUS as the inventor albeit without examination. The Australian (and South African) stance on AI inventorship is different to that of patent offices and courts in other jurisdictions. For example, the UK, the European Union and the US have rejected equivalent patent applications as they do not name a human inventor.
We expect this decision to have a positive impact on many industries that use AI, specifically the pharmaceutical industry, where AI is increasingly being used to achieve effective, quicker and cheaper drug discovery.
The Commissioner is currently considering whether to appeal this decision.
Richard Hamer is a partner at Allens. He can be contacted at: richard.hamer@allens.com.au
Lauren John is a managing associate at Allens.
Alexandra Moloney is a lawyer at Allens.
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