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2 August 2021PatentsAlex Baldwin

Dabus: Australian judge says non-humans can be inventor

The Australian Federal Court has ruled that an artificial intelligence (AI) can be a named inventor but that non-humans cannot apply for patents.

The decision reversed a ruling from the Australian Patent Office, which rejected a patent application from Stephen Thaler, a researcher at Imagination Engines, on behalf of the company’s AI project Dabus.

Thaler had appealed the decision to the Federal Court, claiming 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)—the formalities of an Australian patent application—contesting the deputy commissioner of patent’s ruling that he had not complied with the regulation.

The Deputy Commissioner at the patent office said that Dabus could not be an inventor because “Section 15(1)not capable of sensible operation in the situation where an inventor would be an artificial intelligence machine as it is not possible to identify a person who could be granted a patent”.

However, Federal Court Justice David Beach ruled that inventor is an “agent noun” that does not preclude non-humans, that many otherwise patentable inventions could be precluded if non-humans could not be inventors, and that nothing in the Patents Act contradicts these conclusions.

“Only a human or other legal person can be an owner, controller or patentee. That of course includes an inventor who is a human. But it is a fallacy to argue from this that an inventor can only be a human,” Beach said in the judgment on Friday.

Beach also ruled that while an AI could not be precluded as an inventor, a non-human cannot be an applicant nor a grantee of a patent.

The case was remitted for reconsideration by the patents commissioner.

South Africa decision: lawyers weigh in

Dabus, the “sole inventor” of a food product and an emergency light, has faced several rejections from global patent offices when the company attempted to protect the inventions.

Last week, South Africa became the first country to recognise Dabus as an inventor, a move that Dabus researcher Ryan Abbot told WIPR could influence other country’s attitudes towards AI.

While the application has yet to be granted, it has proceeded to grant without investigation into the validity of the patent or the inventor.

However, lawyers have warned against putting too much stock in the decision. ,

“Unlike other countries, such as the UK and US, in which patent offices have concluded (and the courts have upheld) that an AI cannot be considered an inventor under current legislation, the South African patent office does not carry out substantive examination of a patent application before grant,” said Jeremy Smith, partner at Mathys & Squire.

“Accordingly, the grant of the Dabus patent in South Africa is not an indication that the South African patent office has accepted that an AI can, legitimately, be a named inventor—the patent office may simply not have considered the issue.”

But there may be questions around the validity of the patent and the country’s lawyers are “interested to see developments on that front”, said Herman van Schalkwyk, partner at Spoor & Fisher.

“Our law provides that an applicant must acquire the right to file a patent application from the inventor and the application must be accompanied by an assignment or other proof, of the right of the applicant to apply. It would therefore be interesting to see how the applicant acquired the right to apply for the patent from Dabus.”

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