This article was written by Luke Hawthorne and Mary Aidonopoulos
On 30 July 2021, Justice Beach handed down his decision in Thaler v Commissioner of Patents  FCA 879 finding that an artificial intelligence (AI) system can be an inventor for the purposes of the Patents Act 1990 (Cth) (Act) and remitting the matter back to the Commissioner for re-consideration. To our knowledge, this is the first time in the world that a Court has decided that an AI can be an inventor.
The Applicant, Dr Thaler, is the owner of the copyright in the source code for the Device for Autonomous Bootstrapping of Unified Sentience (DABUS). DABUS is an AI system which was devised to overcome challenges in compound artificial neural networks, and it allows a machine to generate new concepts. DABUS was trained through a combination of supervised and unsupervised learning.
The patent application filed by Dr Thaler named DABUS as the inventor and was rejected by a Delegate of the Commissioner of Patents (Commissioner), because it failed to name a human inventor. The patent was in relation to a food or beverages container’s fractal wall. This wall assists containers having the ability to lock together in transport, and reduces friction for anyone holding the container in their hands. The second invention covered by this patent was for a fractal pulse of light which flickers through a standard light source at a specific frequency designed to attract attention. Related applications have previously been rejected in the United Kingdom, Europe and the United States.
Dr Thaler sought judicial review of the decision by the Commissioner, arguing that section 15 of the Act and the Patents Regulations 1991 (Cth) (Regulations) more generally, do not preclude an artificial intelligence system being treated as an inventor.
Justice Beach found that an artificial intelligence system can be an inventor for the purposes of the Act for the following reasons:
- “inventor” is an agent noun; an agent can be a person or thing that invents.
- this reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the sole inventor; and
- nothing in the Act dictates the contrary conclusion.
Reasons for decision
The ordinary meaning of inventor
The Act, unlike those found in some other jurisdictions, does not define the term “inventor”. Justice Beach compared the widening of this term to the widening conception of “manner of manufacture”, as this is a necessary feature of the development of patent law in the twentieth and twenty-first centuries as scientific discoveries inspire new technologies. He stated that both terms derive from the 21 Ja 1 c 3 (Statute of Monopolies) 1623 (Imp) section 6 and as a result, there is “a synergy if not a symmetry in both being flexibly treated” and “it makes little sense to be flexible about one and not the other”. Justice Beach even went so far to say that giving flexibility to the expression “manner of manufacture” and not to “inventor” would result in tension as “you would be recognising an otherwise patentable invention and then saying that as there is no inventor it cannot be patented”.
Justice Beach stated that more needed to be considered than just the “mere resort to old millennium usages” of the word inventor and recognised the evolving nature of patentable inventions and their creations: “We are both created and create. Why cannot our own creations also create?”
AI as an inventor is not inconsistent with the Patent Act
Justice Beach found that not recognising AI as inventors could produce “inefficiency if not logical difficulties” as persons who were not the ones actually responsible for the invention could be recognised and given the credit.
His Honour then considered section 15 of the Act and whether the patent could be granted under 15(b) or (c).
Section 15(1) of the Act states:
Subject to this Act, a patent for an invention may only be granted to a person who:
- is the inventor; or
- would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
- derives title to the invention from the inventor or a person mentioned in paragraph (b); or
- is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
Justice Beach concluded that patents can only be granted to persons and recognised that DABUS cannot be granted a patent as an AI system cannot be a patent applicant.
Justice Beach considered each category under section 15 of the Act and found that section 15(1)(b) requires no more than the applicant being entitled to have the patent assigned to them. He stated that whether Dr Thaler could be within this section will be decided when the time arises – it was not the subject to this particular decision.
When considering section 15(1)(c), the Commissioner argued that this sub-section involved ‘title’ being held by the inventor, which needed to be transferred to the patent applicant. As AI cannot own the title in an invention, it cannot assign or transfer title under this sub-section. Dr Thaler argued that the title does not need to be transferred as this sub-section extends beyond assignments, and that he has possession of the invention through DABUS as the owner of DABUS. Justice Beach agreed with Dr Thaler and stated:
Now whilst DABUS, as an artificial intelligence system, is not a legal person and cannot legally assign the invention, it does not follow that it is not possible to derive title from DABUS. The language of s 15(1)(c) recognises that the rights of a person who derives title to the invention from an inventor extend beyond assignments to encompass other means by which an interest may be conferred.
In Justice Beach’s view, Dr Thaler, as the owner and controller of DABUS, would own any inventions made by DABUS, when they came into his possession. The judge even went so far as to say that there is no need for the inventor to have ever owned the invention, and there is no need for title to be derived by an assignment.
Some commentators have warned against AI being classed as an inventor, as it may present challenges for the substantive requirements for validity, in particular inventive step.
This decision may have a significant impact for many industries moving forward, in particular biotech and pharmaceutical industries. DABUS is coming! - and it just became a more powerful IP creation tool.
 Thaler v Commissioner of Patents  FCA 879 at 10.
 Thaler v Commissioner of Patents  FCA 879 at 121.
 Thaler v Commissioner of Patents  FCA 879 at 121.
 Thaler v Commissioner of Patents  FCA 879 at 15.
 Thaler v Commissioner of Patents  FCA 879 at 178.
 Thaler v Commissioner of Patents  FCA 879 at 189.