Intellectual Property Update - Thaler v Commissioner of Patents

Intellectual Property Trade Practices
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M Marcus
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[2021] FCA 879

Patents – artificial intelligence inventor

Can an artificial intelligence machine be an “inventor” for the purposes of the Patents Act 1990 (Cth) and Patents Regulations 1991 (Cth) from which a person may derive title to apply for a patent? This debate is being had throughout the world by reason of 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. At the time of this judgment, Dr Thaler had only had success in South Africa, and failed in the US, UK and before the European Patent Office.

Justice Beach was seized of this dispute in the following way in Australia. The Commissioner of Patents concluded that section 15(1) of the Patents Act and regulation 3.2(2)(aa) were inconsistent with an artificial intelligence machine being treated as an inventor, that this deficiency in the patent application was incapable of remedy, because Dr Thaler could not name himself as the inventor, and so the patent application had lapsed.

Dr Thaler, disappointingly represented by humans rather than an artificial intelligence, sought judicial review of the Commissioner’s decisions. In short, Justice Beach found that DABUS was able to be named as the inventor and Dr Thaler could derive title from it to the claimed invention.

Section 15(1) of the Patents Act provides that a patent for in 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 mentioned in paragraph (b); or

(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).

Justice Beach observed that the term “inventor” is not defined and put aside the Commissioner’s submission that in JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2006] FCAFC 141; (2006) 154 FCR 348 (Emmett, Stone and Bennett JJ) it was held (at [71] and [72]) that:

There is no warrant for reading the word inventor as meaning anything different from the person who is responsible for making the invention, namely, the person who makes or devises the process or product. The word bears its ordinary English meaning (Atlantis Corp Pty Ltd v Schindler (1997) 39 IPR 29 at 54 per Wilcox and Lindgren JJ). …

Inventor in s 15(1)(a) refers to the person who makes or devises the invention, wherever the invention may be made. …

Justice Beach did so because the Full Court of the Federal Court was not squarely addressing the issue that his Honour was. His Honour concluded that there was no specific provision that “expressly refutes the proposition that an artificial intelligence system can be an inventor” nor any specific aspect of patent law “unlike copyright law involving the requirement for a human author” that would exclude non-human inventors. Next his Honour held that “inventor” must have its ordinary meaning which, as an agent noun, can be a person or thing (such as computer, controller, regulator, distributor, collector etc).

Furthermore, his Honour held that a flexible and evolutionary definition of inventor was consistent with the High Court’s ruling in D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at [18] that the widening conception of “manner of manufacture” is a necessary feature of the development of patent law as scientific discoveries inspire new technologies. His Honour also considered his view consistent with the object of the Act set out in section 2A as incentivising the development by computer scientists of creative machines. Concluding his analysis of the object of the Act, his Honour observed:

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.

His Honour then observed that, for the purposes of assessing inventive step, section 7(2) and section 18(1) of the Act do not refer to or require an “inventor” as such, “let alone only an inventor who is a legal person”. We note there is no need for those sections to refer to an inventor because they concern the test for whether an invention exists, not who the inventor is or whether there is one. Section 7(2) specifically identifies the notional person against whom inventive step is to be assessed, namely the “person skilled in the relevant art”. His Honour sought to address this in part in suggesting at [145] that the notional person skilled in the art may have access, as part of the common general knowledge, to artificial intelligence, but we are not convinced that would be available given the limited searching the notional skilled person can engage in and the limits on common general knowledge.

Justice Beach also held that proprietary rights may subsist in an invention before applying for a patent and that, as the owner and controller of DABUS, Dr Thaler would own any invention made by DABUS when they came into his possession. In that respect title could be derived from the non-human 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” for the purposes of section 15(1)(c). Accordingly, Beach J was of the view that Dr Thaler was properly an applicant for DABUS’s invention by reason of section 15(1)(c).

His Honour also indicated that it was possible that Dr Thaler could be the proper applicant for DABUS’s invention by reason of section 15(1)(b), which as noted above, allows the grant of a patent to a person who “would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person”. In this regard, his Honour said:

… 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.

The Commissioner has appealed Beach J’s judgment. Interestingly, since Beach J’s decision, and since the Commissioner filed her appeal, on 22 September 2021, the English Court of Appeal delivered its judgment on essentially the same facts in Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374 and found that an inventor must be a person and a person could not derive title to an invention from an artificial intelligence.

In the Patents Act 1977 (UK), section 130(1) provides that the term “inventor” has the meaning given to it by section 7 and section 7(3) provides that the “inventor” in relation to an invention means “the actual deviser of the invention”.

Before the Court of Appeal, Dr Thaler (again represented by humans) argued that the definition of the inventor as the “actual deviser” of an invention pointedly did not refer to the need for the inventor to be a person (which is similar to the position in the Australian Patents Act). While Dr Thaler accepted that the 1977 Act was clearly written on the assumption that inventors were persons, he contended that was not and ought not to be a requirement of the law. Dr Thaler said he could derive the right to apply for and be granted the patents in these circumstances just as the owner of a tree owned the fruit produced by the tree by the law of accession (referring to Blackstone’s Commentary on the Laws of England).

Lord Justice Arnold observed that a dictionary definition of “deviser” is “a person who devises; a contriver, a planner, an inventor”. It is not clear that this definition took the matter anywhere. However, his Lordship then observed that section 7(2) provides that a patent may be granted (a) “primarily to the inventor or joint inventors”, (b) “to any person or persons who …”, (c) “the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above”, but “to no other person”. His Lordship concluded (as did Birss LJ and Elisabeth Laing LJ) that it is clear that each of categories (a), (b) and (c) must consist of a person or persons. It appears that the reference to “no other person” in section 7(2) may have been determinative in light of his reference to other provisions using similar language. Notably, section 15 of the Australian Patents Act does not have that terminology.

Lord Justice Arnold identified various difficulties in expanding the law of accession as described in Blackstone to cover a situation where new intangible property was produced from existing tangible property. First, although as Blackstone was “well aware of the existence of intangible property”, he did not suggest that the rule of accession applied to it. Second, his Lordship observed that, unlike tangible property, intangibles are “non-rivalrous goods (meaning that consumption by one does not preclude simultaneous consumption by others). Thus, the new intangible is not susceptible of exclusive possession, nor does exclusive possession of the intangible follow from exclusive possession of the tangible property that produced it”. Third, there were instances where the doctrine of accession clearly did not apply to a new intangible produced by existing tangible property, such as where a person takes a digital photograph using another’s camera – the first person owns the copyright in the digital photograph even though he or she did not own the camera.

The Court of Appeal was given Beach J’s decision but observed that the “relevant legislation is quite distinct from that in the UK.” Given the lengthy analysis given by Beach J of matters on which the Court relied, including the doctrine of accession, it is disappointing that the Court did not address his Honour’s decision in more detail.

Tom Cordiner Headshot

Tom Cordiner QC 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 practises in commercial litigation, with a particular focus on intellectual property law

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