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Full Court makes its decision on non-human inventors of patents – Commissioner of Patents v Thaler [2022] FCAFC 62 – Patent


In our article “Artificial Intelligence and IP Ownership: will the
IP created by AI meet its maker?
we discussed some
of the issues which arise in the artificial intelligence sphere
(AI) in relation to intellectual property
(IP) ownership.

In particular, we noted the decision of the Federal Court in
Thaler v Commissioner of Patents [2021] FCA 879
(Primary Judgment) which considered whether an AI
program could be listed as the inventor for the purposes of a
patent for an invention under the Patents Act 1990 (Cth)
(Act). In that decision, the Court held that it
was possible for a patent to have an AI program listed as the
inventor on a patent registration, notwithstanding that actual
ownership cannot be vested in the AI.

At the time of writing that article, we noted the Primary
Judgment was subject to appeal to the Full Court of the Federal
Court. That appeal has now been determined.

The Full Court’s decision

On 13 April 2022, the Full Court of the Federal Court made its
determination of the appeal (see Commissioner of Patents v
Thaler
[2022] FCAFC 62). The Full Court unanimously overturned
the decision of Beach J and concluded that AI, a non-human, could
not be considered an inventor for the purposes of
a patent. We have summarised the relevant aspects of the
decision.

Issues on appeal

The Court was asked to consider whether an AI machine could be
considered to be an ‘inventor’ within the meaning of that
term in s15 of the Act.

Section 15(1) of the Act provides that a patent for an invention
may only be granted to a person who:

(a) is the inventor;

(b) would, on the grant of a patent for the invention, be
entitled to have the patent assigned to the person;

(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 (a) (b) or (c).

There was no dispute that in order to be granted a patent as the
inventor in their own right under s15(1)(a), the person applying
needed to be a natural person.

However, the primary judge had held that each of the limbs under
s15(1) were distinct alternatives to one another and that the
inventor subsequently referred to in each of s15(1)(b), (c) and (d)
did not need to be the same ‘human’ inventor referred to in
s15(1)(a).

On that basis the primary judge held that the application made
by Dr Thaler (listing an AI program as the inventor) fell within
the alternative limbs of s15(1)(b) and s15(1)(c).

While Dr Thaler was not the ‘inventor’ in his own right,
as a natural person under s15(1)(a) he would be entitled to have
the rights assigned to him or derive title to the invention from
the AI program which invented the invention upon the grant of the
patent.

A key issue on appeal was to consider this position and whether
the four classes of persons in paragraphs (a), (b), (c), (d) were
distinct and separate sources of entitlement, or whether a legal
relationship was required between the inventor (referred paragraph
(a)) and the person entitled to the grant under ss15(1)(b), (c) or
(d).

The Full Court on the appeal held the correct interpretation was
a legal relationship must exist between the ‘human’
inventor in s15(1)(a) and the person entitled to the grant. As
such, a person under ss 15(1)(b), (c) and (d) can only be entitled
to the grant of a patent after they have received that entitlement
from a human inventor who is otherwise entitled under s15(1)(a).
1

Accordingly, the Full Court confirmed that the
‘inventor’ named in the patent application must be a
natural person .

“Actual inventor”

In providing its decision on the meaning of inventor for the
purposes of s15(1), the Full Court considered the history of
patents legislation, including a range of historical case law.

The historical cases considered by the Full Court emphasised the
requirement that a patent application demonstrate the
inventor’s role in conceding the invention. Moreover, the
former Patents Act 1952 (Cth) (which was superseded by the
current Act) predicated the ability of a person to apply for a
patent upon the existence of an “actual inventor” – that
is, a person with a legal personality.

Their Honours also referred to the Statute of Monopolies
1623 (UK)
(which is foundational to the principles of the
current Act) which highlights the relationship between rewarding
ingenuity and acts of invention by the “true and first
inventor”.

It should be noted “inventor” is not defined in the
Act. That fact, however, is immaterial, having regard to the
historical objectives considered by the Court and discussed
above.

It is clear the legislature had not made any statutory
alteration which would change the role or meaning of the inventor
as a natural person as has been the historical position at common
law. Accordingly, and because the entitlement to a patent is
founded in human ingenuity and labour, the Court relied upon this
historical meaning in forming the view that an inventor must be a
natural person.

Conclusion

The Full Court’s approach maintains the present stance in
Australia in relation to the interaction between AI and the law.
That is, human authorship is paramount.

What is made clear by this case is that issues which arise with
AI and IP ownership are at the forefront of people’s minds and
people remain unsettled with the implications of our current
legislation when it applies to AI and new technologies. With AI and
other emerging technologies growing rapidly, the decision by the
Full Court highlights the essential issues which may need to be
considered by the legislature in order to ensure appropriate
management of AI and any IP rights.

At the time of writing, Dr Thaler has filed an application for
special leave to appeal to the High Court of Australia. Should Dr
Thaler be successful, we expect that there will be further
interesting developments in this case.

Footnote

1 Commissioner of Patents v Thaler
[2022] FCAFC 62 at [107] – [109].

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.



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