Australian Judge Rules Inventions Developed by Artificial Intelligence Can Qualify for Patent Protection

by Eric Caligiuri
The IP Law Blog

In Thaler v. Commissioner of Patents, case number VID 108 of 2021, in the Federal Court of Australia, an Australian Federal Judge became the first known jurist to rule that inventions developed by artificial intelligence can qualify for patent protection.

The case involved a patent application from Dr. Stephen Thaler, a researcher who runs a Missouri company called Imagination Engines. 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. DABUS was the inventor of two inventions, a type of improved beverage container and a type of flashing beacon meant to be used in emergencies.

Dr. Thaler did recently obtain the world’s first patent on an invention created by an identified artificial intelligence inventor in South Africa. However, patent applications in South Africa are not subject to a formalized patent-examination procedure like that found in the United States and Europe, and therefore the significance of that patent is not yet known.

Thus, turning back to this case, the Australian patent office found that such a system could not be an inventor because the Australian Patent Act (Act) is inconsistent with an artificial intelligence machine being treated as an inventor. The Judge, however, found the artificial intelligence system can be an inventor for the purposes of the Act.

First, the Judge reasoned an inventor is an agent noun; an agent can be a person or thing that invents. Accordingly, if an artificial intelligence system is the agent which invents, it can be described as an “inventor.” And, nothing in the Act dictates the contrary conclusion. Explaining further, the Judge reasoned there is no specific provision in the Act that expressly refutes the proposition that an artificial intelligence system can be an inventor. In other words, 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.

Next, the Judge reasoned that it is consistent with the object of the Act to construe the term “inventor” in a manner that promotes technological innovation and the publication and dissemination of such innovation by rewarding it, irrespective of whether the innovation is made by a human or not. And, the Judge reasoned, without the ability to obtain patent protection, owners of creative computers might choose to protect patentable inventions as trade secrets without any public disclosure.

Further, the applicant is the owner, programmer, and operator of DABUS, the artificial intelligence system that made the invention and machines have been already autonomously or semi-autonomously been used to generate patentable results for some time now. In other words, the applicant as the owner and controller of DABUS would own any inventions made by DABUS, when they came into his possession and would be entitled, as the owner of the invention, to have the patent assigned to him. And the Act requires no more than that the applicant is entitled to have a patent assigned to him, in the event that there is a grant.

Thus, the Judge found 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.

The applicant, Dr. Thaler, has also attempted to have his AI-invented technologies patented in the United States and Europe without success so far. However, those applications are under review at the European Patent Office and United States District Courts. Going forward, the outcome of those cases and others like it will not only have a determining impact on artificial intelligence inventor patent applications, but could also have drastic implications for other areas of patent law such as conception and obviousness.