The Full Court of the Federal Court of Australia has unanimously ruled that artificial intelligence (AI) computing systems cannot be recorded as inventors on Australian patents.
The Full Court's decision, released on overturns the primary Federal Court of Australia judgment and reinstates the original decision of the Australian Patents Office under IP Australia.
The Patent Application
Dr Thaler filed an Australian patent application in 2019 under the WIPO Patent Cooperation Treaty (PCT), with the title "Food container and devices and methods for attracting enhanced attention."
A formal requirement of patent applications is that the application must list one or more Inventors, which the Patent Act 1990 (Cth) deems to be the original owners of the invention claimed by the patent.
Dr Thaler listed "DABUS" (an acronym for "Device for the Autonomous Bootstrapping of Unified Science") as the inventor and noted that the claimed invention the subject of the patent was the creation of an AI system.
At patent examination level, the patent examiner queried the validity of the inventorship claim. IP Australia advised the applicant that the patent had to claim a natural person (that is, a human being) as the inventor. Nominating an AI was, according to the examiner, invalid under the Patent Regulations. Thus, the patent application was not in order and could not proceed.
Following exchanges between the applicant and the Deputy Commissioner at IP Australia, the patent application ultimately lapsed - having failed to satisfy the natural person inventorship requirement.
The Deputy Commissioner determined that:
- the language of the Act and Regulations does not specifically define "inventor", which meant an ordinary dictionary definition should be implied;
- the legal ownership of a patent when granted could only be derived from the inventor in the first instance - thus, the inventor must be a "person" capable of holding legal title, or assigning that title to a subsequent applicant or patentee;
- there were no other provisions in the Patents Act that assisted in drawing the conclusion to allow an AI as inventor.
Dr Thaler applied to the Federal Court for judicial review of that decision.
The Federal Court Primary Decision
Before the Federal Court of Australia in 2021, Dr Thaler was successful in overturning the Patents Office decision. It was held that an AI system could be found to be an inventor within the scope of the Patents Act definitions.
The Primary Judge held that the Act did not explicitly require that an inventor must be a natural person, notwithstanding the Court's acceptance of the principle that an AI or machine cannot hold legal ownership of property and that DABUS would be ineligible to be the patentee in its own right.
The Court took the position that Dr Thaler could derive title to the patent, by virtue of the fact that he controlled and owned DABUS. Thus, it was not strictly necessary that DABUS could be capable of holding legal title.
The Full Court Decision
The Commissioner appealed the Primary Decision to the Full Court.
On appeal, the Commissioner argued that there was no recognised precedent for inventorship in anything other than a natural person. Further the Commissioner argued that the Primary Judge erred in their interpretation of the law and the evidence by imputing a favoured policy position.
In response, Dr Thaler argued imposing a natural person requirement would unjustly deny otherwise valid patents simply because the inventions were were generated by AI systems.
In their unanimous decision, the Full Court held that the original decision of the Patent Examiner on formality grounds was in order:
 … In the present case the Deputy Commissioner formed the view, … that the name [of the inventor] provided did not comply with the requirements of reg 3.2C(2)(aa) because it was a legal impossibility for an artificial intelligence machine to be "the inventor of an invention". Accordingly, [the Deputy Commissioner] concluded that the requirements of reg 3.2C had not been met [and the application must therefore be rejected]. This was an appropriate course to take.
Considering historical jurisprudence and legislative evolution of patent law, the Full Court held the correct construction of the term "Inventor" must inherently refer to the person who is responsible for the invented concept, product or processs. Prior case law dealing with inventors is inconsistent with the proposition that an inventor could be anything other than a natural person:
 … However, it is plain from these cases that the law relating to the entitlement of a person to the grant of a patent is premised upon an invention … arising from the mind of a natural person … 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.
Whilst the Full Court recognised the need for further debate in the area (and indeed suggested the filing of the patent application was "no doubt intended to provoke" it — at ), their honours returned to the fundamental position that only a natural person could be regarded as a valid inventor under the current Act.
It remains to be seen whether Dr Thaler will appeal to the High Court of Australia.
- Thaler  APO 5 (Australian Patent Office Decision)
- Thaler v Commissioner of Patents  FCA 879 (Primary Decision)
- Commissioner of Patents v Thaler  FCAFC 62 (Full Court Decision)
Cover Photo: Alex Knight via Unsplash
Mt Gravatt East Queensland 4122
Closed Public Holidays.