منتدى الويبو لقضاة الملكية الفكرية لعام

This is an informal case summary prepared for the purposes of facilitating exchange during the 2022 WIPO IP Judges Forum.

Session 2: Patents and New Technologies

Federal Court of Australia [2022]: Commissioner of Patents v Thaler [2022] FCAFC 62

Date of judgment: April 13, 2022

Issuing authority: Federal Court of Australia

Level of the issuing authority: Appellate instance

Subject matter: Patents (Inventions)

Plaintiff: Commissioner of Patents (appellant)

Defendant: Thaler (respondent)

Keywords: Patents, Artificial intelligence, Inventor

Basic facts: The Respondent, Stephen Thaler, filed a patent application, giving as the name of the inventor “DABUS” with the additional comment “[t]he invention was autonomously generated by an artificial intelligence”.  DABUS is an acronym for “device for the autonomous bootstrapping of unified sentience”.  The Deputy Commissioner of Patents (IP Australia) determined that the terms of the Patents Act and Regulations were inconsistent with an artificial intelligence being treated as an inventor.  Thaler applied for judicial review of the Deputy Commissioner’s decision on the basis that he had erred in law.  The primary judge concluded that an inventor as recognized under the Patents Act can be an artificial intelligence system or device and ordered that the Deputy Commissioner’s determinations be set aside.  The Commissioner of Patents appealed from the decision of the primary judge. 

Held:  The Full Court of the Federal Court of Australia decided, having regard to the statutory language, structure and history of the Patents Act, and the policy objectives underlying the legislative scheme, that the Deputy Commissioner was correct to reach the conclusion that, by naming DABUS as the inventor, the patent application did not comply with Regulation 3.2C(2)(aa) of the Patent Regulations.

Relevant holdings in relation to patent applications naming AI machines as the inventor: The central question in this appeal was whether a device characterized as an artificial intelligence machine could be considered to be an “inventor” within the meaning ascribed to that term in the Patents Act and the Patents Regulations. 

The primary judge and the Full Court agreed that that the “inventor” in Section 15(a) of the Patents Act had to be a human.  However, they disagreed in the proper meaning to be given to Sections 15(1)(b), (c) and (d), whereby the Full Court found that each of the people mentioned in the later subsections had to derive their title from the person in (a), which meant that the owner of a patent could only be a human inventor, or a person who derived their title to the patent from that human inventor.

Relevant legislation:

Section 15 of the Patents Act 1990 of Australia

Regulation 3.2C(2)(aa) of the Patents Regulations 1991 of Australia