Intellectual Property Law Update Commissioner of Patents v Thaler [2022] FCAFC 62 - 13 April 2022 Allsop CJ, Nicholas, Yates, Moshinsky and Burley JJ

Intellectual Property
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M Marcus
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Patents – artificial intelligence – concept of “inventor” under Patents Act 1990 (Cth) – whether an inventor must be a natural person

Artificial Intelligence

The central question in the appeal was whether a device characterised as an artificial intelligence machine can be considered an “inventor” within the meaning ascribed to that term in the Patents Act 1990 (Cth) and the Patents Regulations 1991 (Cth). In the result, the Full Court answered that question in the negative, overturning the conclusion of the primary judge (Beach J) that an “inventor”, within the meaning of the Patents Act, can be an artificial intelligence system or device.

Astute readers will recall that the debate in this proceeding, which is being had throughout the world, arises from Dr Thaler’s application for a patent for an invention that he says was invented by the artificial intelligence he created and runs, called DABUS. The Commissioner of Patents concluded that section 15(1) of the Patents Act (which sets out “Who may be granted a patent?”) and regulation 3.2(2)(aa) were inconsistent with an artificial intelligence machine being treated as an inventor, which deficiency was incapable of remedy. The primary judge overturned that decision, finding that DABUS was able to be named as the inventor and that Dr Thaler could derive title from it to the claimed invention, and that Dr Thaler was properly an applicant for DABUS’s invention by reason of section 15(1)(c) (and possibly also by reason of section 15(1)(b)).

Section 15(1) of the Patents Act states that a patent for an invention may only be granted to a person who: (a) is the inventor; or (b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or (c) derives title to the invention from the inventor or a person mention in paragraph (b); or (d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).

The Full Court held that, while not defined in the Patents Act, the term “inventor” in s 15(1) is a reference to the inventor of the invention the subject of the patent application, and that “inventor” has long been held to bear its ordinary English meaning, being the person or persons responsible for making the invention (that is, the person who makes or devises the process or product). The Full Court also observed that identification of the inventor within s 15(1) is of central relevance to the operation of the Patents Act, and is intertwined with concepts material to the validity of patent applications and patents, including in the context of the ground of revocation under s 138(3)(d) relating to the making of false suggestions and in the context of challenges to validity involving contests relating to entitlement under s 138(3)(a).

As to the latter, the Full Court observed that the law relating to the entitlement of a person to the grant of a patent is premised upon an invention arising from the mind of a natural person or persons.

Pursuant to s 15(1)(a), a patent for an invention may be granted to a person who is an inventor. The Full Court held that the reference to “a person” emphasises, in context, that this is a natural person. In that regard, the Full Court disagreed with the Deputy Commissioner insofar as he considered that “person”, as understood in s 15(1)(a), to have the extended definition supplied by s 2C of the Acts Interpretation Act 1901 (Cth), which extends the meaning of person to include bodies politic or corporate as well as individuals.

Respectfully, we find this conclusion surprising. The words “a person” appear in the chapeau to s 15(1) – not in sub-paragraph (a) – and must therefore be read in conjunction with each of sub-paragraphs (b), (c) and (d) as well. Section 29(1) of the Patents Act provides that “a person” may apply for a patent for an invention, and s 29(5) states that, in that section, “person includes a body of persons, whether incorporated or not”. Further, s 138(3)(a) of the Patents Act – in respect of which the Full Court held s 15(1) is of “central relevance” – provides a ground of revocation where the “patentee” is not entitled to the patent, where the term patentee means “the person for the time being entered in the Register as the grantee or proprietor of a patent” and which is not limited to natural persons.

The Full Court disagreed with the conclusion of the primary judge that each of ss 15(1)(a), (b), (c) and (d) could be construed as alternatives, such that a person might draw entitlement to grant from an inventor who is not the person identified in s 15(1)(a) (or indeed a natural person at all). The Full Court preferred the view that, on a natural reading of s 15(1), each of ss 15(1)(b), (c) and (d) provide for circumstances where a person becomes entitled to the grant of a patent by ultimately receiving that entitlement from the inventor in s 15(1)(a), observing that there must be a legal relationship between the actual inventor and the person first entitled to the grant.

If the Full Court is correct about its conclusion that the “inventor” in s 15(1)(a) must be a natural person then, as a matter of consistency, we think it is logical that the “inventor” in s 15(1)(c) must also be a person. However, we respectfully observe that appears odd to say that s 15(1)(a), (b), (c) and (d) are not alternatives when the word “or” appears between each.

In the result, the Full Court held that, having regard to the statutory language, structure and history of the Patents Act, and the policy objectives underlying the legislative scheme, 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).

In closing, the Full Court made two further observations. First, it cautioned against approaching the task of statutory construction by reference to what be regarded as desirable policy, imputing that policy to the legislation, and then characterising that as a purpose of the legislation (which approach the Full Court observed had been favoured by the primary judge). Second, the Full Court did not accept the proposition that, if DABUS is not accepted to be an inventor, no invention devised by an artificial intelligence system is capable of being granted a patent, observing that the question of whether the subject application has a human inventor had not been explored in the litigation and remains undecided.

At the time of writing, the deadline for making an application for special leave to appeal the decision of the Full Court to the High Court of Australia has not elapsed. Given the interesting and important issues raised by the appeal, and his approach overseas, we would be surprised if Dr Thaler does not seek special leave.

Tom Cordiner Headshot

Tom Cordiner KC holds the dual qualification of barrister and registered patents and trade mark attorney

M Marcus

Melissa Marcus practises in defamation law and all aspects of intellectual property

Marcus Fleming Headshot 1

Marcus Fleming has a significant practice in commercial litigation with a particular focus on intellectual property law.

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