Thaler v Commissioner of Patents

IMPORTANT ISSUE

1. Whether an Artificial Intelligence (AI) device can be recognised as the inventor for granting a patent.

SUBJECT MATTER OF PATENT

The invention was a food container that improves grip and heat transfer. The patent application also claimed various products and methods concerning containers, devices and methods for attracting enhanced attention using convex and concave fractal elements.

FACTUAL MATRIX

1. Dr. Thaler invented an AI device named Device for Autonomous Bootstrapping of Unified Sentience (DABUS), in the United States of America (USA).
2. Thaler filed a patent application with the Australian Patent Office, for the invention of a food container with better grip and more efficient heat transfer. The patent application contained DABUS as the name of the inventor.
3. The Deputy Commissioner refused the patent application stating that an AI was a non-human and only natural persons can be recognised as inventors under the law.
4. Aggrieved by this order, Thaler filed an appeal before the federal court.

SUBMISSIONS BY THE APPLICANT

1. It was conceded that DABUS is not capable of owning or assigning a patent. What was pleaded by the Applicant Dr. Thaler is that DABUS still qualifies under Section 15 of the Patents Act 1990 for two alternate arguments-

• Dr. Thaler stated that he would qualify for ownership under the provisions of Section 15(1)(b). He submits that Section 15(1)(b) has been applied to employee inventions, where there is no contract in place which sets out the employer’s entitlements, and there is no reason why the same should not be extended in this case.
• In arguendo, Dr Thaler submitted that he falls within s 15(1)(c) because he has derived title from the inventor, namely, DABUS. Even though DABUS, as an artificial intelligence system, is not a legal person and cannot legally assign the invention, he says that it does not follow that it is not possible to derive title from DABUS, given his ownership over DABUS itself.

SUBMISSIONS BY THE RESPONDENT

• The term inventor is not defined anywhere and hence, we must proceed on the basis of its ordinary dictionary meaning. Accordingly, the inventor is whoever devises the invention. Therefore, the Act contextualised in the time it was enacted would allow only for natural persons to be considered as an inventor. Even if we were to agree that present times require a more modern and broader interpretation of the word “inventor”, the scheme of the Act may not permit the same.
• In the instant case, DABUS is named the inventor, with Dr. Thaler being the intended patent owner. It is important to note that Dr. Thaler is the creator of DABUS which is in turn merely a human creation. A person who did not devise the invention but acquired knowledge from the inventor is not themselves an inventor. Second, a person can derive title from the inventor in many ways. Third, it is essential that the derivation of title must be from the inventor. These three criteria would not be fulfilled by DABUS. Thus we see that DABUS derived information/knowledge from the programming written by Thaler, and DABUS being a non-person is not capable of holding rights which may then be transferred to Thaler.
• The law in its present form does not recognise the capacity of an artificial intelligence machine to assign property”. Further, with regard to s 15(1)(c), he could not see “how the owner of a machine can be regarded as the communicatee of artificial intelligence” as, even if information could have been communicated for the purpose of applying for a patent, the artificial intelligence machine cannot have a beneficial interest in any property he also rejected as inapplicable the doctrines of accession or first possession as ownership “automatically vests” rather than “by conceptually moving title ‘from’ the artificial intelligence machine to the owner of the machine”

HELD

• An inventor is an agent noun; an agent can be a person or thing that invents. Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor. Third, nothing in the Act dictates the contrary conclusion.
• Justice Beach pointed out that while considering the scheme of the Act, it has been said that a widening conception of “manner of manufacture” is a necessary feature of the development of patent law in the twentieth and twenty-first centuries as scientific discoveries inspire new technologies”. He opined that the concept of “inventor” should also be seen in an analogously flexible and evolutionary way
• It is consistent with the object of the Act to construe the term “inventor” in a manner that promotes technological innovation and the publication and dissemination of such innovation by rewarding it, irrespective of whether the innovation is made by a human or not.
• Consistently with Section 2A(object of the Act), computer inventorship would incentivise the development by computer scientists of creative machines, and also the development by others of the facilitation and use of the output of such machines, leading to new scientific advantages.
• Further, recognising computer inventors and patents on computational inventions could promote disclosure and commercialisation consistently with the object. Without the ability to obtain patent protection, owners of creative computers might choose to protect patentable inventions as trade secrets without any public disclosure.
• Further, if only an artificial intelligence system could be said to have created the output, but you only permit of human inventors, you may not have an inventor. Hence one may not be able to patent the invention. So you may have the case where artificial intelligence has created an invention in terms of the output, but there is no inventor and it cannot be at that time patented. But then, say, as Abbott touched on, along comes a human, observes the output for what it is, “discovers” the output and correspondingly the invention and then asserts that he is the inventor because of his discovery. That would be an odd outcome to say the least. But even put aside that example. Generally, it is quite undesirable to preclude a class of otherwise patentable inventions from patentability on the basis of an exclusion that is not apparent from the express words of the Act. Indeed, that would be the antithesis of promoting innovation.
• Thus, in conclusion , DABUS is recognised as an inventor and the patent application filed by Dr.Thaler shall be granted if other eligibility criteria are met with.

Citation: [2021] FCA 879
Copy of judgement