Australia reverses DABUS AI inventorship ruling
The Federal Court of Australia has overturned its prior ruling that artificial intelligence (AI) can be a named inventor on a patent application, striking down the last year’s surprising win for Stephen Thaler and his ongoing AI inventorship campaign.
In a judgment published today, April 13, a five-judge panel ruled that Thaler’s “DABUS” AI did not comply with the necessary criteria for inventorship outlined in Australian patent law.
haler claims that the DABUS AI was the sole inventor” of a food product and an emergency light and has attempted to file a patent application on behalf of the AI in several jurisdictions, including the UK, US, Japan, South Africa, and Australia.
After his patent application was denied by the deputy commissioner at the Australian Patent Office, Thaler appealed the decision to the Australian High Court, where, in August last year, Justice David Beach overturned the commissioner's decision.
However, the commissioner appealed this decision, asking the court to reconsider whether an inventor under criteria laid down by the country’s Patents Act 1990 and the Patents Regulations 1991.
The commissioner took issue with several of Beach’s findings, including that she had acted “prematurely” in denying DABUS inventorship and submitted that Thaler had failed to provide a “name” for the inventor as properly defined under the Patents Act.
She also contended that provisions for patent validity related to “a person skilled in the relevant art” cannot work if the inventor is not human.
In response, Thaler reinforced Beach’s opinion that the Patents Act does not “mandate a human inventor” and had abided by all the requirements for valid patent submission.
This time, the five-judge panel noted that, while no prior case law had tackled the issue of whether an inventor could include an AI, it was “plain” from prior litigation that the entitlement to a patent was predicated on an invention “arising from the mind of a natural person or persons”.
“Only a natural person can be an inventor for the purposes of the Patents Act and Regulations”, the five-judge panel stated.
“Accordingly, having regard to the statutory language, structure and history of the Patents Act, and the policy objectives underlying the legislative scheme, we respectfully disagree with the conclusion reached by the primary judge [Beach].
The deputy commissioner was correct to reach the conclusion that, by naming DABUS as the inventor, the application did not comply with reg 3.2C(2)(aa).”
Thaler has been approached for comment.
‘Positive impact’
In his initial appearance before the Federal Court, Thaler argued that Section 15(1) of the country’s Patents Act 1990—which concerns who may be granted patent protection—did not preclude AI systems from being treated as inventors.
Thaler claimed that he filed the prescribed forms and provided the name of the inventor, consistent with the requirements of Regulation 3.2C(2)(aa) and contested that the deputy commissioner at the Patent Office had not complied with the regulation.
The commissioner had claimed that DABUS could not be an inventor because “Section 15(1)not capable of sensible operation in the situation where an inventor would be the artificial intelligence machine as it is not possible to identify a person who could be granted a patent”.
However, the Federal Court ruled in August that the term “inventor” is an “agent noun” that does not preclude non-humans, and that many otherwise patentable inventions could be precluded if non-humans could not be inventors.
This made Australia the second jurisdiction to have ruled that an AI could, in theory, invent, following shortly after a similar decision from South Africa’s patent office.
The ruling was met with a mixed reaction, with some claiming that it could have a “positive impact on many industries that use AI, specifically the pharmaceutical industry” and lead to quicker and cheaper drug discovery.
However, the commissioner then appealed the ruling, claiming that the judge misconstrued Section 15 and regulation 3.2C(2)(aa).
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