The High Court of Australia has rejected a request for special permission from a patent applicant who filed an Australian patent application naming an artificial intelligence (AI) system as the inventor.
The High Court’s ruling means that the dominant position in Australia – that a patent application cannot identify a non-human inventor – stands. This position is consistent with the position in other jurisdictions where corresponding applications have been filed (including the US, UK, EU, New Zealand, Taiwan, Korea, Israel and India), noting that calls are still ongoing in some of these countries. jurisdictions.
Although this is the end of the line for this particular patent application, the High Court’s comments leave the door open for the ‘inventor question’ to be heard by the High Court in the future. , if a more appropriate case is brought before the Court.
The Court appears to be concerned with resolving the underlying question of whether the AI system is indeed the sole inventor and in this case it was agreed between the parties that the plaintiff, Dr Thaler, was not an inventor. The Court’s comments suggest that a proper case for determination may involve a natural person claiming to be the inventor and facing rejection on the grounds that the true inventor is an AI system.
It should be recalled that this line of rulings dealt with the procedural issue of whether the application in question, designating a non-human inventor, was validly filed for the purposes of the Act. It says nothing about the merits of the claimed invention, or whether the invention could be delivered on its merits. It also does not prevent patent applications from being filed for inventions that use AI, as long as the applications only list humans as inventors (any such application would, of course, have to comply with the usual patentability requirements before a patent is granted) .
The policy debate also remains open, and it remains to be seen whether the Australian government will consider amending the Patents Act 1990 (Cth) (Law) or the Patents (Cth) Regulations 1991 (Regulations) to recognize non-human inventors.
Context and history of the procedure
In 2019, Dr. Stephen Thaler filed Australian Patent Application No. 2019363177 for “Food container and devices and methods for attracting increased attention” (Application). Dr. Thaler named his AI system, “DABUS”, as the inventor of the app.
As reported here, a delegate of the Commissioner of Patents rejected the application for failure to comply with the formality requirements set out in the Patents Regulations 1991 (Cth), because it was not possible to identify a person who could obtain a patent on the application.
Dr Thaler appealed this decision to the Federal Court of Australia. As we reported here, in a groundbreaking decision that captured global media attention, a single Federal Court of Australia judge ruled in favor of Dr. Thaler. His Honor found that the term “inventor” was not defined in the Act or the Regulations, and there was nothing expressly prohibiting an RN from being listed as an inventor in the application.
The Commissioner of Patents then appealed Judge Beach’s decision to the Full Court of the Federal Court of Australia. As we reported here, an expanded bench of five judges overturned Judge Beach’s decision. In a unanimous decision, the Full Court ruled that an “inventor” must be a “natural person” – based on the historical centrality of a human inventor’s role in patent applications, the economics of law and regulations and the natural reading of section 15(1) of the Act.
Dr Thaler has requested special leave to appeal this decision to the High Court of Australia, the Superior Court of Australia and his final opportunity to have the petition reviewed by an Australian court.
Application for special leave
Before the High Court heard the appeal, Dr Thaler had to satisfy a smaller number of judges to grant ‘special leave’ to appeal. Most special leave applications are decided “on paper”, based on written submissions filed by the parties.
In this case, Dr. Thaler’s claim was heard in person by three judges – Justices Gordon, Edelman and Gleeson. During the hearing, Their Honors learned that Dr. Thaler’s case had been decided by the Federal Court (both at first instance and on appeal) on the basis of certain facts agreed between Dr. Thaler and the Commissioner for patents. These agreed facts included that Dr. Thaler was not the inventor of the alleged invention claimed.
This left the High Court in the position that if leave were granted, the Court would confine itself to considering the narrow question of whether the Commissioner was correct in dismissing the application, solely because a non-natural person was listed as the inventor . The Court could not address the factual question of whether or not DABUS was the inventor (or even the co-inventor) of the Application. Rather, it should have proceeded – as the lower courts had – on the basis that DABUS was the inventor.
This may have weighed on the Court’s mind when, in denying the request for special leave, Judge Gordon (speaking for the Court) said that this case “was not the appropriate vehicle to examine the matter of principle that Dr. Thaler.
This leaves open the possibility that the High Court will tackle this issue in the future, if a “suitable vehicle” is presented to the Court. In the meantime, it remains to be seen whether the Australian government considers any changes to the law or regulation to be necessary.
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