Q&A: Australia’s DABUS AI ‘inventor’ decision
The Australian Federal Court became the first court to claim that artificial intelligence (AI) can be an inventor.
In a landmark decision on Friday, Justice Beach overturned an Australian Patent Office’s rejection of an application from AI researcher Stephen Thaler that listed his company’s AI project Dabus as the sole inventor.
Patent protection for AI inventions is a controversial issue, with several international IP offices dismissing patent applications with an AI listed as an inventor prior to this ruling.
Last week, South Africa became the first country to recognise Dabus as an inventor, albeit under non-substantive criteria. This decision went against the trend set by courts in the UK and US and, according to Dabus researcher Ryan Abbot, could influence other country’s attitudes towards AI inventorship.
Now, Australia has followed suit, claiming that nothing in the country’s Patents Act 1990 precluded AI from being inventors.
WIPR asked Melbourne-based Richard Hamer, partner at Allens Linklaters, to break down the Justice’s decision.
On what grounds did the justice overturn the earlier decision from the deputy commissioner for patents?
The ordinary meaning of inventor does not exclude an artificial intelligence system.
The term “inventor” is an agent noun. Like “computer” or “dishwasher” it refers to the agent that does the act denoted by the verb to which the suffix “or” or “er” is appended. It is not limited to a human agent.
The objects of the Patents Act are the promotion of technological innovation and the dissemination of technology. There is no reference to a requirement that the innovation has to be generated by a human.
A person who is not the inventor can be entitled to apply for an invention. The title to an invention can be derived from an inventor other than by legal assignment.
A person can derive title by obtaining possession from an AI system that they own and control, much as the owner of a mare derives title to a foal.
Where does this leave the patents commissioner?
The decision means that an AI system can be named as the inventor of a patent.
The commissioner will still need to examine the application to determine whether it complies with other requirements for patentability.
Is this unexpected from Justice Beach?
Given that applications for AI-generated inventions had so far been rejected in other jurisdictions such as the US, Europe and England, the general sentiment was that the appeal would not succeed.
We were always optimistic, though. In our view, the decision was not unexpected for Justice Beach. His Honour has academic qualifications in physical chemistry and the philosophy of science, and is familiar with the ways that AI is already being used in innovation, particularly in the pharmaceutical industry.
Will it be appealed, in your opinion?
The matter is one of importance and the Commissioner may well appeal. On the other hand, the decision is a strong one and the Commissioner may think the prospects of success insufficient to justify an appeal.
Where does this leave AI patents in
AI has been used for some years as part of the innovative process. Often its role has been to assist a human, but there are cases where it is increasingly difficult to point to a true human inventor.
As there is a requirement to identify an inventor of a patent, the false attribution of inventorship to a human, when the true inventor is AI, has the potential to invalidate the patent. This is therefore an important matter to resolve.
Some things will not change as a result of the decision. For example, the owner of a patent must be a legal person; an AI system cannot own a patent. Similarly, the test for obviousness will still be based in a human skilled addressee.
The decision will encourage the use of AI systems to innovate because the innovative products of the inventive process of AI systems can be protected. It will encourage investment in the implementation of AI inventions because the owners of inventions made by AI will have a period of patent protection to justify the often high cost of being the first mover with a new technology.
This is likely to be of particular importance in the area of development of new biopharmaceutical compounds.
Of course it is still to be seen if other countries will follow this lead. It is to be noted the recently granted South African patent was granted without examination so did not involve a formal decision on the issue. So Justice Beach's decision is the first.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
Today’s top stories
AIPPI names Judith Willert as new exec director
Ubisoft, Bungie team up against videogame cheat maker
UKIPO aims to put IP ‘at the heart’ of govt’s innovation strategy
