THALER V. COMMISSIONER OF PATENTS (2021)

1. Facts                                                                                                                                    1-2

2. Issues raised                                                                                                                        2

3. Contention                                                                                                                          2-3             

4. Rationale                                                                                                                             3-4

5. Defects of law                                                                                                                     4-5

6. Inference                                                                                                                             5

Review of — Stephen L. Thaler [2021] APO 5

Date of judgement – 30 July 2021

Judgement of – BEACH J

FACTS

BETWEEN :  STEPHEN THALER

                         Applicant

AND :             COMMISSIONER OF PATENTS

                     Respondent

♦ The Deputy Commissioner of Patents has determined that patent application no. 2019363177 did not comply with reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth). Reg 3.2C(2)(aa) 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.

♦ 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. But it has been determined by the Deputy Commissioner that such a system could not be an inventor.

♦ The Deputy Commissioner considered that s 15(1) of the Patents Act 1990 (Cth) is inconsistent with an artificial intelligence machine being treated as an inventor; so too reg 3.2C(2)(aa). It was also said that Dr Thaler’s application and its deficiencies were incapable of remedy.

♦ Further, it was determined that Dr Thaler had not complied with a direction under reg 3.2C(4), and that his application had lapsed.

♦ Dr. Thaler seeks judicial review of these decisions under s 5(1) of the Administrative Decisions (Judicial Review) Act 1977 (Cth) and s 39B of the Judiciary Act 1903 (Cth). He says that s 15, and the Act and the Regulations more generally, do not preclude an artificial intelligence system being treated as an inventor. He says that the Deputy Commissioner misconstrued s 15(1), and the Act and the Regulations more generally, as being inconsistent with an artificial intelligence system being treated as an inventor.

♦ The underlying question for my determination is whether an “inventor” for the purposes of the Act and the Regulations can be an artificial intelligence system. As I have indicated, that question arises because reg 3.2C(2)(aa) requires that an applicant of a Patent Cooperation Treaty (Washington, 19 June 1970) (PCT) application must provide the name of the inventor of the invention to which the application relates.

♦ 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 an artificial intelligence machine as it is not possible to identify a person who could be granted a patent” (at [32]). The effect of his reasoning is that an artificial intelligence system can invent something that satisfies all of the requirements of patentability in terms of novelty, inventiveness and utility, but such an invention will be unpatentable because the Act requires a human inventor.

♦ Now Dr Thaler is the owner of copyright in DABUS’s source code. He is also the owner, is responsible for and is the operator of the computer on which DABUS operates. But Dr Thaler is not the inventor of the alleged invention the subject of the application. The inventor is identified on the application as “DABUS, The invention was autonomously generated by an artificial intelligence”. DABUS is not a natural or legal person. DABUS is an artificial intelligence system that incorporates artificial neural networks.

♦ The alleged invention is the output of DABUS’ processes. Various products and methods are claimed concerning containers, devices and methods for attracting enhanced attention using convex and concave fractal elements.

ISSUES RAISED

  • Can an artificial intelligence machine be an “inventor” for the purposes of the Patents Act 1990 (Cth) and Patents Regulations 1991 (Cth) from which a person may derive title to apply for a patent?

CONTENTION

The Commissioner’s arguments

The Commissioner accepted that the word “inventor” in reg 3.2C(2)(aa) has the same meaning as it does in s 15(1)(a). This is not to elide considerations of entitlement under s 15 with the assessment of validity of an application for a patent. Rather, according to the Commissioner, it is to recognize the congruence of meaning stemming from the use of the same word in circumstances where the primary person to whom the patent will be granted is the inventor. All other people derive title to the patent, and the invention claimed therein, via the inventor (Stack v Davies Shephard Pty Ltd (2001) 108 FCR 422 at [21] per Whitlam, Sundberg and Dowsett JJ and JMVB at [71] per Emmett, Stone and Bennett JJ).

As to Dr Thaler’s position that the provision of “DABUS” satisfied this requirement so that the application should proceed to examination, thereby justifying the grant of relief on this application, the Commissioner says that this suggestion is misplaced.

 Further, the Commissioner made the following submissions concerning the meaning of “inventor”.

The Commissioner says that the ordinary meaning of “inventor” is inherently human: “someone who invents, especially one who devises some new process, appliance, machine or article; someone who makes invention” (see Macquarie Dictionary (online)). This accords with s 2C(1) of the Acts Interpretation Act. It is said that the human quality of ingenuity that resides in the notion of invention as a matter of ordinary language resonates through the definitions of the cognate words in the dictionaries that explicate the meaning of “inventor”, such as, devise, contrive or contrivance, conceive or conception.

Further, the Commissioner says that the characterization of “inventor” as an agent noun does not alter this ordinary meaning. The distinction between the personal and the mechanical is one mentioned in Fowler’s Dictionary of Modern Usage

The Commissioner says that the ordinary meaning of “inventor” does not signify a non-human actor. It is said that this may be contrasted, for example, with “computer”, originally a person and more recently an apparatus.

Further, the Commissioner says that an artificial intelligence machine cannot own a patent, so s 15(1)(a) does not apply; nor can it assign one under s 15(1)(b).

The Commissioner says that s 15(1)(b) necessarily presupposes an “inventor”, whether as the origin of the invention giving rise to title under the general law prior to grant or upon grant, consistently with ss 15(1)(a) and (c). The Commissioner says that in the present case, there is no relevant juridical act, and no requisite legal relationship beyond possession, that establishes that upon grant Dr Thaler would be entitled to an assignment.

Further, the Commissioner says, in relation to s 15(1)(c), that it cannot be said that Dr Thaler “derives title to the invention from the inventor”. The Commissioner says that s 15(1)(c) requires the existence of a title that moves from the inventor to the other person. On the facts, it is said that this does not exist here.

Dr Thaler’s arguments

Dr Thaler points out that the definition of “invention” in the Act includes an “alleged invention”. As I have said, the Act defines “invention” to mean “any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention” (s 3 and sch 1). Moreover, any person may apply for a patent for an alleged invention.

Dr Thaler says that he is a person who through his patent attorneys filed the prescribed forms. In those forms, Dr Thaler provided the name of the inventor, consistent with the requirements of reg 3.2C(2)(aa).

Accordingly,

                    Dr Thaler says that the determination by the Deputy Commissioner that the application has lapsed because Dr Thaler has not complied with the direction under reg 3.2C(4) was in error.

Further, Dr Thaler contends that an “inventor” under the Act can be an artificial intelligence system or device.

Further, Dr Thaler says that it is accepted that DABUS is not capable of owning or assigning a patent. Nonetheless, Dr Thaler says that he falls within s 15, on two alternative bases.

First, Dr Thaler says that he falls within s 15(1)(b). He submits that s 15(1)(b) has been applied to employee inventions, where there is no contract in place which sets out the employer’s entitlements.

Second, and in any event, Dr Thaler submits that he falls within s 15(1)(c) because he has derived title from the inventor, namely, DABUS. Even though DABUS, as an artificial intelligence system, is not a legal person and cannot legally assign the invention, he says that it does not follow that it is not possible to derive title from DABUS.

RATIONALE

It is convenient to begin my analysis by making some general observations,

There is no specific provision in the Act that expressly refutes the proposition that an artificial intelligence system can be an inventor.

There is no specific aspect of patent law, unlike copyright law involving the requirement for a human author or the existence of moral rights, that would drive a construction of the Act as excluding non-human inventors.

Further, machines have been autonomously or semi-autonomously generating patentable results for some time now.

                        So, and consistently with s 2A, you are simply recognizing the reality by according artificial intelligence the label of “inventor”.

Further, if only an artificial intelligence system could be said to have created the output, but you only permit of human inventors, you may not have an inventor. Hence one may not be able to patent the invention. So you may have the case where artificial intelligence has created an invention in terms of the output, but there is no inventor and it cannot be at that time patented.

Let me now turn to s 15 as this seems to have been the high point for the Commissioner’s case.

Section 15(1) of the Patents Act provides that a patent for in 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).

Justice Beach observed that the term “inventor” is not defined and put aside the Commissioner’s submission that in JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2006] FCAFC 141; (2006) 154 FCR 348 (Emmett, Stone and Bennett JJ) it was held (at [71] and [72]) that:

There is no warrant for reading the word inventor as meaning anything different from the person who is responsible for making the invention, namely, the person who makes or devises the process or product. The word bears its ordinary English meaning (Atlantis Corp Pty Ltd v Schindler (1997) 39 IPR 29 at 54 per Wilcox and Lindgren JJ). …

Inventor in s 15(1)(a) refers to the person who makes or devises the invention, wherever the invention may be made. …

Justice Beach did so because the Full Court of the Federal Court was not squarely addressing the issue that his Honour was. His Honour concluded that there was no specific provision that “expressly refutes the proposition that an artificial intelligence system can be an inventor” nor any specific aspect of patent law “unlike copyright law involving the requirement for a human author” that would exclude non-human inventors.

Generally, on a fair reading of ss 15(1)(b) and 15(1)(c), a patent can be granted to a legal person for an invention with an artificial intelligence system or device as the inventor.

DEFECTS OF LAW

The Full Court’s decision emphasized that policy considerations should not cloud the task of statutory construction. Nevertheless, their Honours acknowledged the need for greater clarification regarding the interaction between AI and patent law, describing such debate as important and worthwhile. The judgment identified numerous propositions that should be considered within this context as follows:

“…whether as a matter of policy, a person who is an inventor should be redefined to include an artificial intelligence. If so, to whom should a patent be granted in respect of its output? …If an artificial intelligence is capable of being recognized as an inventor, should the standard of inventive step be recalibrated such that it is no longer judged by reference to the knowledge and thought processes of the hypothetical uninventive skilled worker in the field? If so, how? What continuing role might the ground of revocation for false suggestion or misrepresentation have, in circumstances where the inventor is a machine?”

These considerations are just some of the important questions which will arise if legislative changes are introduced permitting AI systems to be named as inventors in the absence of human involvement.

INFERENCE

As I have said,

                         s 15 concerns who may be granted the patent. The Commissioner is not being asked to decide that question now. The question is whether a valid PCT application has been presently lodged. The only impediment it would seem is reg 3.2C(2)(aa) and the Commissioner’s interpretation of that requirement.

First, in my view the name of the inventor can be a non-human. The Commissioner is incorrect in saying that you cannot have a non-human inventor.

Second, if the Commissioner would have it that reg 3.2C(2)(aa) requires the name of a human inventor, that is not what the Act mandates. Accordingly, if the Commissioner is correct, I would read down the regulation to avoid it being ultra vires, so that in effect it reads “the name of a human inventor (if applicable)”.

Third, the Deputy Commissioner ought not to have used subordinate legislation to summarily rule out a substantive consideration and examination of Dr Thaler’s application in circumstances where:

(a)    Dr Thaler was a valid applicant;

(b)    prima facie his application is not said not to disclose a patentable invention;

(c)    no other difficulties with his application have been identified;

(d)    the question of grant is some years away; and

(e)    it cannot be said now that Dr Thaler could not later bring himself within s 15(1)(b) and / or s 15(1)(c) in terms of being entitled to a grant.

On this aspect, and if it is necessary to say so, I also agree with Dr Thaler’s procedural point that I referred to earlier.

In summary,

                    in my view, an inventor as recognized under the Act can be an artificial intelligence system or device. But such a non-human inventor can neither be an applicant for a patent nor a grantee of a patent. So to hold is consistent with the reality of the current technology. It is consistent with the Act. And it is consistent with promoting innovation.

I will set aside the Deputy Commissioner’s determinations and remit the matter for reconsideration in accordance with these reasons. The parties have already agreed that given the significance of the issue there should be no order for costs, whoever wins.

Submitted By- Anchal Maurya

1st year student faculty of law [Delhi University]

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