In a decision handed down on 13 April 2022, a panel of five judges of the Federal Court of Australia (‘Full Court’) overturned last year’s controversial ruling by Justice Jonathan Beach, determining that the (alleged) ‘AI inventor’ DABUS cannot be named as an inventor for the purposes of applying for a patent in Australia, and that the law requires the inventor to be a natural person or persons: Commissioner of Patents v Thaler [2022] FCAFC 62 (‘Thaler FC’). Regular readers of this blog will recall that I tentatively predicted this outcome after observing the Full Court hearing earlier this year. As it turns out, I need not have been so tentative in my prediction. The decision of the appeals court was fast, unanimous and unequivocal.
The Full Court has taken a conventional approach to determining the meaning of the term ‘inventor’ in the Patents Act 1990, observing (at [83]) that ‘[t]he duty to resolve an issue of statutory construction is a text-based activity’ and that while it is ‘appropriate to consider policy considerations … the surest guide to ascertaining the legislative intention is the language of the text of the legislation itself’. In the absence of an express definition of ‘inventor’ in the Patents Act, the Court turned its attention to the legislative history, and the overall statutory context, with particular (though not exclusive) reference to the provisions regarding entitlement to the grant of a patent set out in section 15(1) of the Act.
The Court found (at [105]) that:
…the law relating to the entitlement of a person to the grant of a patent is premised upon an invention for the purposes of the Patents Act arising from the mind of a natural person or persons. Those who contribute to, or supply, the inventive concept are entitled to the grant. The grant of a patent for an invention rewards their ingenuity.
As to whether Dr Thaler, as the owner of DABUS and the person responsible for its creation and operation, could be entitled to the grant of a patent naming the AI machine as inventor, the Full Court found (at [113]) that:
It is not to the point that Dr Thaler may have rights to the output of DABUS. Only a natural person can be an inventor for the purposes of the Patents Act and Regulations. Such an inventor must be identified for any person to be entitled to a grant of a patent under ss 15(1)(b)-(d).
The Court also observed (at [115]) that while ‘the development of patent law since 1624 has not until now been confronted with the question of whether or not an inventor may be other than a natural person’, the law has ‘proceeded on the assumption that only a natural person could be an inventor’. This includes the key High Court decisions in National Resource Development Corporation v Commissioner of Patents [1959] HCA 67 (‘NRDC’) and D’Arcy v Myriad Genetics Inc [2015] HCA 35 (‘Myriad’), in which the Court proceeded on the basis – as the Full Court put it at [116] – that ‘human agency was required in the development of the invention in suit’.
In criticising the approach taken by the primary judge, the Full Court stated (at [120]) that ‘the Court must be cautious about approaching the task of statutory construction by reference to what it might regard as desirable policy, imputing that policy to the legislation, and then characterising that as the purpose of the legislation.’ Furthermore, the Full Court noted (at [121]) that the case was decided subject to the agreed facts that DABUS was an inventor and that Dr Thaler was not, but that ‘the characterisation of a person as an inventor is a question of law’ and ‘[t]he question of whether the application the subject of this appeal has a human inventor has not been explored in this litigation and remains undecided.’
The decision brings Australia back into line with other jurisdictions, including the US, the UK, Germany, the European Patent Office and Taiwan, where the naming of a machine as inventor has been found to be incompatible with patent laws. However, Dr Thaler’s legal avenues are not yet exhausted in Australia. In an email to Law360 (paywalled, unfortunately) Professor Ryan Abbott (whose Artificial Inventor Project is the true driving force behind the DABUS patent applications and court cases) has confirmed that they ‘plan to seek leave to appeal’ to the High Court. I am going to be less tentative this time, and predict that the High Court will deny any application for special leave. The Full Court’s decision is plainly correct, and any amendment of the law to permit non-human inventors is now a matter for legislators, following appropriate public consultation and consideration of the full consequences of such a development.
Read on for a more detailed analysis of the Full Court’s decision.