The Australian High Court has denied an application for special permission to a patent applicant who has filed an Australian patent application naming an artificial intelligence (AI) system as the inventor.
The Supreme Court’s decision means that the prevailing 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 counterclaims have been filed (including the US, UK, EU, New Zealand, Taiwan, Korea, Israel and India) noting that appeals are still underway in some of those jurisdictions.
Although that’s the end of the line for this particular patent application, the Supreme Court’s comments left the door open for the Supreme Court in the future to hear the “inventors’ case,” should a more appropriate case come before the court.
The Court seemed interested in resolving the fundamental issue of whether the AI system was 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 indicate that an appropriate case to decide would 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 noted that this line of decisions focused on the procedural question of whether the application in question, or the designation of a non-human inventor, had been properly filed for the purpose of the law. It says nothing about the merits of the claimed invention, or whether the invention is grantable on its own merits. Nor does it preclude the filing of patent applications for inventions that use AI, so long as the applications only list humans as inventors (any such application, of course, would have to comply with the usual requirements for patentability 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) (Represent) or the Patents Regulations 1991 (Cth)systems) to identify non-human inventors.
Background and procedural history
In 2019, Dr Stephen Thaler filed Australian Patent Application No. 2019363177 for “Food Container, Devices, and Methods for Attracting Augmented Attention” (Request). Dr. Thaler nominated his AI system, “DABUS” as the inventor of the app.
As we have been informed over hereThe delegate of the Commissioner for Patents rejected the application for not meeting the formal requirements set forth in Patent Regulations 1991 (Cth), because it was not possible to identify the person who could be granted a patent on the application.
Dr Thaler has appealed this decision to the Australian Federal Court. As we have been informed over hereIn a groundbreaking decision that garnered global media attention, a single Australian Federal Court judge agreed with Dr Thaler. Honor found that “inventor” was not defined in law or regulations, and that nothing expressly prohibited an AI being listed as an inventor in an application.
The Commissioner of Patents then appealed Justice Beach’s decision to the full court of the Australian Federal Court. As we have been informed over here, an expanded panel of five judges overturned Justice Beach’s decision. In a unanimous decision, the Full Court held that an “inventor” must be a “natural person” — based on the historical centrality of the human inventor’s role in patent applications, the outline of law and regulations, and a naturalistic reading of Section 15(1) of the Act.
Dr Thaler has sought special leave to appeal this decision to the Supreme Court of Australia, the High Court of Australia and his last chance to have the application heard by an Australian court.
Request a special leave
Before the appeal could be heard by the Supreme Court, however, Dr. Thaler had to persuade fewer judges to grant “special leave” to appeal. Most private leave requests are decided “on the sheets,” based on written submissions submitted by the parties.
In this case, Dr. Thaler’s application was heard personally by three justices – Justices Gordon, Edelman and Gleeson. During the hearing, I heard with their honors that Dr. Thaler’s case has been brought up in Federal Court (both at first instance and on appeal) by reference to certain facts which had been agreed upon between Dr. Thaler and the Commissioner of Patents. Those agreed facts included that Dr. Thaler was not the inventor of the alleged invention in question.
This left the Supreme Court in the position that if permission was granted, the court would confine itself to considering the narrow question of whether the commissioner was right to deny the application, just because an unnatural person had been listed as the inventor. The court could not deal with the factual question of whether or not DABUS was the inventor (or even co-inventor) of the application. Instead, it had to proceed – as the courts below have done – on the grounds that DABUS was the inventor.
This was probably weighing on the Court when, in denying the application for special leave, Justice Gordon (speaking for the Court) stated that this case ‘was not the appropriate vehicle for consideration of the question of principle which Dr. Thaler.
This leaves open the possibility that the Supreme Court may deal with this issue in the future, if an “appropriate remedy” is offered to the court. In the meantime, it remains to be seen whether the Australian government considers any changes to the law or regulations required.