The evolution of innovation Artificial Intelligence can be an inventor of a patentable invention

What you need to know

• Justice Beach of the Federal Court has determined that an artificial intelligence (AI) system can be named as the inventor on an Australian patent application. 
• An AI machine cannot be named as an applicant or a grantee of an Australian patent.
• This is the first court decision in the world permitting non-humans to be named as inventors.  The US, UK and EPO have all rejected patent applications which named an AI system as an inventor. 

What you need to do 

• AI systems are not permitted to be named as inventors in a number of other jurisdictions.  Therefore, caution should be exercised before naming an AI system as an inventor where the patent will be filed both in Australia and abroad. 
• This decision may be appealed so stay tuned for further developments.

Justice Beach has concluded that an artificial intelligence (AI) system can be named as an inventor of a patentable invention.  This surprising decision is the first court determination in the world to recognise non-humans as inventors.

Background

Dr Stephen Thaler applied for a patent and listed an AI system named DABUS (the device for the autonomous bootstrapping of unified sentience) as the inventor.  Dr Thaler claimed that DABUS created the inventions the subject of the patent autonomously.  The patent application claimed various products including storage containers and devices and methods for attracting enhanced attention. 

The Deputy Commissioner of Patents noted that DABUS was named as the inventor on the patent application and determined that an AI system could not be named as an inventor.  Therefore, the Deputy Commissioner determined that the application did not comply with reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth) (Regulations) because Dr Thaler, as the applicant, had failed to name a human inventor.  

The decision 

Justice Beach rejected the Deputy Commissioner's position and found that DABUS could be an inventor for the purposes of the Patents Act 1990 (Cth) (Act) and Regulations.  

Interpreting "inventor"

Justice Beach reviewed various provisions in the Act and Regulations and concluded that none of the provisions prevented an AI system being named as an inventor.  The Court rejected the Commissioner's reliance on dictionary definitions of the word "inventor".  His Honour concluded that the dictionary definitions were inclusive and exemplary rather than definitive. 

Instead, His Honour focused on the term "inventor" as used in the Act and concluded that it was an agent noun in the same category as the terms "regulator", "computer" and "lawnmower".  Since agent nouns can operate as either a person or a thing, the legislation did not preclude an AI system from being an inventor.  His Honour contrasted this with the language in the copyright legislation which expressly requires a human author.  

His Honour also highlighted the "flexible and evolutionary way" that patent law has been interpreted to keep up with technology.  His Honour focused on the law regarding manner of manufacture and questioned why the concept of an "inventor" could not be developed in the same way.  

The objects clause – promoting innovation

The Deputy Commissioner had declined to consider the objects clause of the Act because the relevant provisions were not ambiguous.  Justice Beach disagreed with this approach.  His Honour noted that the objects clause set out the purpose of the Act being to promote economic wellbeing through technological innovation and the transfer and dissemination of technology.  This purpose should be considered on all occasions when the Act is being construed.  

The objects clause confirmed Justice Beach's view that an AI system could be named as an inventor.  Such an interpretation would promote technological innovation and publication and dissemination of such innovation.  A failure to recognise AI systems as inventors would be the antithesis of the purpose of the Act and therefore, this interpretation should not apply. 

By way of example, his Honour considered the current and potential uses of machine learning in the pharmaceutical industry to demonstrate the challenges in interpreting the concept of "inventor" as excluding AI.  His Honour concluded that "to do so would inhibit innovation not just in the field of computer science but all other scientific fields which may benefit from the output of an artificial intelligence system" ([56]).   

S 15 – who may be granted a patent?

Justice Beach contrasted who may be named as an inventor with who may apply for and be granted a patent. 

Section 15 contemplates four classes of person that may be granted a patent.  These are:

• a person who is the inventor (s 15(1)(a));

• a person who would, on the grant of the patent, be entitled to have the patent assigned to them (s 15(1)(b));
• a person who derives title from the inventor or someone entitled to be assigned the patent (s 15(1)(c)); or 
• the legal representative of a deceased person in one of the paragraphs above (s 15(1)(d)).

Clearly, the first and last classes above are not applicable.  

The Deputy Commissioner argued that an AI system could not be an inventor because it could not assign its rights to the invention.  His Honour disagreed, explaining that:

"the ownership of the work of the artificial intelligence system is analogous to ownership of the progeny of animals or the treatment of fruit or crops produced by the labour and expense of the occupier of the land (fructus industrialis), which are treated as chattels with separate existence to the land" ([167]).

Justice Beach found that the assignment provision was typically interpreted as applying to a written assignment from a human inventor but this was only one scenario.  His Honour found that Dr Thaler may be able to establish an assignment although it was ultimately not necessary to decide this matter on this occasion. 

Justice Beach also concluded that Dr Thaler may fall within s 15(1)(c) by deriving title to the invention from the inventor, DABUS.  The parties accepted that the ordinary meaning of "derive" includes to receive or obtain from a source or origin, to get, gain or obtain, and emanating or arising from.  His Honour confirmed that it does not necessarily require title to first vest in the inventor.  Justice Beach explained how Dr Thaler derived title in the invention as follows:

"In my view, Dr Thaler, as the owner and controller of DABUS, would own any inventions made by DABUS, when they came into his possession.  In this case, Dr Thaler apparently obtained possession of the invention through and from DABUS.  And as a consequence of his possession of the invention, combined with his ownership and control of DABUS, he prima facie obtained title to the invention.  By deriving possession of the invention from DABUS, Dr Thaler prima facie derived title.  In this respect, title can be derived from the inventor notwithstanding that it vests ab initio other than in the inventor.  That is, there is no need for the inventor ever to have owned the invention, and there is no need for title to be derived by an assignment" ([189]).

Discussion 

Judicial recognition of an AI system as an inventor for the purpose of a patent application is a world first.  His Honour's reasoning relied upon the absence of an express definition of "inventor" in the Patents Act 1990 (Cth) and the patent system's purpose in promoting innovation.

There remain a number of challenges with this decision.  As a practical consideration, it is not clear how you "name" an AI system.  Unlike humans who have an identity which is recorded with a government such that an individual can be identified, there is no such regulation for technology.  Their names are entirely arbitrary.  This may give rise to real challenges with tracking how inventions have been developed in the future.

Further, the Court has not yet had to grapple with the issue of who can apply for a patent with an AI inventor.  Justice Beach declined to express a concluded view on this issue.  It is not clear whether the individual/company that derives or is assigned title is the owner of the AI system, the creator of the AI system and/or the company that trains the AI system. 

Finally, the flow on effects for the remainder of patent law are unclear.  Will the existence of an AI inventor alter the "person skilled in the art" construct which is central to patent law?  Will the common general knowledge be all the data on which the AI system was trained?  How will the criteria of best method and sufficiency be satisfied in circumstances where the AI system does not operate in an explainable manner?  

Conclusion

Given the significance of this decision, it is likely to be appealed.  Until the Full Federal Court makes a determination on this issue, it is unlikely that a substantial number of patents will be filed naming an AI system as an inventor.

Patent applicants should also exercise caution when naming an AI system as an inventor if they intend to file their patent application abroad.  To date, the US, UK and EPO have all determined that an AI system cannot be named as an inventor.  Accordingly, while an AI system may be able to be named as an inventor in Australia, advice should be sought before adopting this approach because of the risk of the application being rejected overseas.