Excerpt by ESNA --- an AI-bot from esandag-ai-art-studio.com, 07-Aug-2021
Act.2019363177 did not comply with reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth), which “requires that the applicant, who in this case is Dr Stephen Thaler, must provide the name of the inventor of the invention to which the application relates.”
The Deputy Commissioner of Patents said that Thaler could not name an inventor because the inventor he had named, the AI system DABUS, simply cannot be an inventor under the Act. The relevant law
Subsection 15(1) of the Australian Patents Act 1990 (Cth) (the Act) provides that a patent may be granted to a person who:
* is the inventor; or
* would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
* derives title to the invention from the inventor or a person mentioned in paragraph (b); or
* is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
Patent Office rejects DABUS as an inventor
Following national phase entry of the AU Application, the Patent Office issued an adverse formalities report on the basis that a natural person was not named as an inventor and that DABUS is not capable of “transferring or communicating” (e.g., by assignment) the invention to Dr Thaler. However, according to the Deputy Commissioner in Stephen L. Thaler [2021] APO 5, subsection 15(1) supports the proposition that “entitlement of the patentee flows from the inventor, and absent devolution the inventor will become the patentee”.
Further, Beach J considered that to deny grant of a patent for an otherwise patentable invention because the inventor is not a natural person would be the antithesis of the object of the Act to “provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology…”. Meanwhile, although the relevant applications withstood substantive examination in Europe and the UK, the European Patent Office Board of Appeal issued preliminary communications to the effect that DABUS does not have “legal capacity” within the meaning of the European Patent Convention (although oral proceeding are not scheduled until December 2021) and the UK High Court deemed the relevant applications withdrawn because a human was not named as the inventor. The legal status of artificial intelligence (AI) has taken a new turn, as an Australian judge accepted that it is possible to list AI systems as an inventor on a patent application if the AI systems are the agents that invent the product.
In a landmark decision, an Australian court has set a ground breaking precedent, deciding artificial intelligence (AI) systems can be legally recognised as an inventor in patent applications. But it is a fallacy to argue from this that an inventor can only be a human.” – Justice Beach
The Federal Court of Australia on Friday ruled in Thaler v Commissioner of Patents [2021] FCA 879 that an artificial intelligence (AI) system can be an inventor under the Australian Patents Act.2019363177 did not comply with reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth), which “requires that the applicant, who in this case is Dr Stephen Thaler, must provide the name of the inventor of the invention to which the application relates.”
The Deputy Commissioner of Patents said that Thaler could not name an inventor because the inventor he had named, the AI system DABUS, simply cannot be an inventor under the Act. But Justice Beach said “that position confuses the question of ownership and control of a patentable invention including who can be a patentee, on the one hand, with the question of who can be an inventor, on the other hand.” He continued:
Only a human or other legal person can be an owner, controller or patentee. Australian Court finds AI systems can be an “inventor”
A judge of the Federal Court of Australia has found that artificial intelligence (AI) is capable of being an “inventor” for the purposes of the Australian patent regime. The confirmation that, in Australia, AI can be “inventors” under our existing regime (subject to any appeal decision) is contrary to the position in the UK, EPO and USA, where an inventor must be a natural person. The Commissioner was of the view that the ordinary meaning of “inventor” (which is not defined in the Patents Act) was “inherently human”, and that naming AI as the inventor was incompatible with section 15 of the Patents Act, which provides:
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 mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c). In particular, the Commissioner said that in relation to:
* section 15(1)(b) “[i]t is an uncontroversial observation that the law does not presently recognise the capacity of an artificial intelligence machine to assign property”;
* section 15(1)(c), an artificial intelligence could not have any beneficial interest in property, and requires a title that moves from the inventor to another person, which on the facts, does not exist here.
Beach J found that there was “no specific provision [in the Patents Act] that expressly refutes the proposition that an artificial intelligence system can be an inventor”, and in such circumstances, AI can be an inventor. As to the Commissioner’s arguments pertaining to section 15 of the Act, his Honour said that he found the Commissioner’s reliance on thus section “curious”, because the application only at the formalities stage, which simply required the “inventor” to be named, and nowhere near the stage of grant (which section 15 contemplates).
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