With the recent ruling that Artificial Intelligence (AI) can be an inventor, the Australian Court has given a new dimension towards the rulings for the AI as an inventor. This was done in the recent case of Thaler v. Commissioner of Patents [2021] FCA 879, where the issue was the grant of a patent for an invention developed by AI. The Court ruled that the AI can be inventor adding onto the jurisprudence of already developing area.

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Deputy Commissioner of Patent

The Deputy Commissioner of Patents that the application did not comply with reg 3.2C (2) (aa) of the Patents Regulations 1991 (Cth) which requires that the applicant must provide the name of the inventor of the invention to which the application relates, the applicant being Dr. Stephen Thaler. An artificial intelligence system, which has been described as a device for the autonomous bootstrapping of unified sentience (DABUS), was named as the inventor by Dr. Thaler, to which Deputy Commissioner rejected this contention. Relying on section 15(1) of the Patents Act, Deputy Commissioner noted that the AI machine as an inventor is inconsistent and the deficiencies were incapable of remedy. The Deputy Commissioner held that an artificial intelligence system cannot be an inventor because “[s]ection 15(1) is clear, but not capable of sensible operation in the situation where an inventor would be the artificial intelligence machine as it is not possible to identify a person who could be granted a patent.” The invention is the output of the DABUS process; concerns itself with containers, devices, and methods for attracting enhanced attention using convex and concave fractal elements.

Federal Court

The PCT application was filed by Prof. Ryan Abbott with Dr. Stephen Thaler and the application was AI system DABUS as an inventor. A specialist in theoretical artificial neural network technology, Dr. Thaler is the president and SEO of Imagination Engines Inc. Dr. Thaler is the one who operates the computer which created DABUS and is the owner of the copyright of DABUS’s source code. It was contended that DABUS produced the invention and was responsible for that.

As the formalities check requires that the application must include the inventor’s name, to which DABUS was included, and hence, the application was rejected ruling that the inventor needs to be a natural person which DABUS was not and hence, cannot transfer and communicate.

Rejecting the Patent Office ruling, the Federal Court ruled that AI can be an inventor. The Court ruled that there is no prescribed definition of “inventor” in the Patent Act and therefore the inventor can be both a natural person or thing and that there is nothing in it (the Act) that says otherwise.  The Court relied on section 15 (1) (c) and observes that AI can be termed as an inventor as the possession of Dabus was with Theler and Thaler also has Dabus’s source code and the computer on which Dabus runs.  Referring to section 15(1) (b), the entitlement of patent can be granted to Thaler without the need for invention to be owned by the invention, the title to be derived by assignment.

There can be various arguments that can be raised either for or against the said ruling. The ruling about the ownership of AI sufficient to derive title may result in having complete ownership of the invention. But if the invention falls outside the scope of that AI, what will happen to those inventions? The question seems unanswered.  Therefore, the ownership of AI being sufficient to derive title might create a problem for that invention which is outside the scope thereby benefitting the owner for which he has no contribution.

Nevertheless, for granting patent protection, the invention must pass the entire pre-requisite requirement for the grant. The patentability requirement has not been altered and remains the same. Moreover, the application for Dabus was also filed in other jurisdictions, where South Africa granted the patent for DABUS. The decision of the EU and UK patent office is under appeal.

Author: Saransh Chaturvedi an associate at Global Patent Filing,  in case of any queries please contact/write back us at support@globalpatentfiling.com.