Australian judges could shape law on AI inventorship globally

The judges at the Federal Court of Australia will hear arguments on the question of AI inventorship on Wednesday 9 February. The decision they reach could be persuasive to others considering the issue elsewhere in the world.

The case behind the question of AI inventorship

In various jurisdictions around the world, US scientist and technologist Dr. Stephen Thaler has been bidding to register patents for inventions he claims an AI system he created is responsible for.

In his patent applications, Thaler has named his ‘DABUS’ system as inventor, arguing that patent law supports the concept of AI inventorship. He claims he is entitled to the assignment of patent rights granted for the machine’s inventions. Thaler’s claims have challenged the traditional understanding that invention is something only people are capable of, not machines

Thaler’s argument, that patent law allows DABUS to be the named inventor on a patent application and for him to benefit from the patents granted, has so far received a mixed response before patent offices and the courts around the world.

Late last year, the European Patent Office Board of Appeal (EPO BoA) ruled that AI systems cannot be named as an inventor on a patent application because the designated inventor for a European patent application must be a person with legal capacity.

That view was shared by a district court in the US state of Virginia and the Court of Appeal in England and Wales, which ruled against Thaler in September last year. However, the decision of the Court of Appeal was not unanimous. Two leading authorities on UK patent law, Lord Justice Arnold and Lord Justice Birss, disagreed on the question of whether the law provides for AI inventorship, with the third sitting judge in the case, Lady Justice Laing, favouring Lord Justice Arnold’s interpretation of the underlying legal framework.

In Germany, the Federal Patent Court reached a more nuanced position, ruling that the named inventor in a patent application must be a natural person, but that the AI system supposedly responsible for the underlying invention can be additionally named.

Thaler, however, has so far successfully argued his case in South Africa and Australia, where a judge of the Federal Court of Australia, Justice Beach, considered that an AI system can be an inventor for the purposes of Australia’s patent laws. That ruling overturned an earlier decision by the deputy commissioner of patents and is now the subject of an appeal before an enlarged, full bench of five judges at the Federal Court.

The legal arguments raised

In his ruling, Justice Beach held that none of the provisions of patent law “exclude an inventor from being a non-human artificial intelligence device or system”. That view is challenged by the commissioner of patents, Paula Adamson, who has raised the appeal.

The commissioner believes Justice Beach’s view is not supported by historical context. She cited the evolution of the law over hundreds of years and said that the law has always provided that the concept of inventor is “confined to human inventors”.

According to the commissioner, the concept of an inventor is interlinked with that of inventorship, which she said envisages human endeavour. She said her view is further supported by the purpose of IP rights, which she described as being to “support innovation by rewarding human endeavour by encouraging the making of inventions and the authorship of works”. Because “AI is not a person there is simply no question of encouragement to innovate”, she said.

The commissioner of patents is also arguing that it is not possible, under the proper construction of the law, for a non-human to own or assign patents. She said the fact that employers are often entitled to benefit from the inventions of employees through the grant of a patent is not analogous to the situation between DABUS and Thaler, and that Justice Beach had not explained the legal basis on which DABUS could be said to have assigned any entitlements it may have to Thaler.

The commissioner said that a plain reading of Australian patent law “clearly excludes a non-person such as an AI device or system” from being an inventor. She said Justice Beach had not cited any part of Australia’s Patents Act “that would allow the grant of a patent to a non-human inventor” and had instead turned to “extraneous concepts” of property law in reaching his findings. Those concepts, she said, “do not appear in the statute” and this “distracts from the statutory text”.

The commissioner believes that to extend patents to inventions originating from non-human inventors “would require express legislative change”.

However, in his outline submissions, Dr Thaler has said the commissioner of patents had not cited any part of the Australian Patents Act that would “preclude the grant of a patent which names a non-human inventor”. He said the commissioner’s arguments rely on too literal an interpretation of the wording of the law and highlighted difficulties with this approach. Dr Thaler said, for example, that a literal reading of the legislation would not only preclude AI systems from qualifying as inventors, but women too.

Dr Thaler also argues that if invention and inventor are reciprocal concepts, as the commissioner has claimed, the consequences of that are that if it is conceded that an AI system can invent, then “it is an inventor”.

Dr Thaler said that the protection of AI inventions is consistent with the object of the Patents Act and that the consequence of the commissioner’s counterargument would be “the antithesis of the objects of the Act”.

To support his point, he said: “By protecting the inventions of AI machines, innovation is rewarded, because humans are encouraged to create AI machines which are capable of creation, to publish inventions that are made by such machines (rather than keeping them confidential to protect them), and to ‘transfer and disseminate’ such inventions where significant investment is required downstream the act of invention (such as for new medicines). That reward for innovation is consistent with the objects of the Act.”

Thaler also rejected the notion that Australian patent law purports to provide an exhaustive definition of inventors, and further rejected the idea that even though a non-human inventor is excluded from claiming entitlement this excludes an AI machine from being an inventor. The natural meaning of the word ‘inventor’ also supports the conclusion that it is possible for an AI system to be an inventor, according to Dr Thaler.

Why the Australian court’s ruling might be persuasive elsewhere

It is common for judges to look at relevant case law elsewhere in the world when reaching decisions in cases before them, even if the case law from other jurisdictions is not binding on them. With parallel litigation in the DABUS case ongoing around the world, and with the underlying law being so similar across jurisdictions, many eyes will be on the outcome of the appeal in Australia.

The seniority and expertise of the judges appointed to rule in the case, coupled with the likely timing of the decision relative to proceedings ongoing elsewhere, means the verdict reached in Australia on the question of AI inventorship could be persuasive elsewhere.

The appeal will be heard on 9 February 2022 by an enlarged bench of five judges at the Federal Court of Australia, rather than the usual three, in a special sitting of the Full Court of the Federal Court of Australia.

The sitting judges include two of the most senior IP judges in Australia, Justices Nicholas and Yates, as well as patent specialist Justice Burley. The bench is completed by the Court’s most senior judge, Chief Justice Allsop and Justice Moshinsky, who is on the IP National Practice Area panel. It will be the largest sitting of specialist IP panel judges to consider the question of AI inventorship yet.

It is relatively uncommon for an enlarged bench of five judges to be convened at the Federal Court of Australia. It is a sign that the Court takes the legal questions at issue seriously and is determined to ensure a comprehensive consideration of the law and how it should be interpreted.

The Full Court of the Federal Court is not the court of last resort in Australia. It is possible that the Full Court’s ruling could be appealed to the High Court of Australia, by way of an application for special leave to appeal. However, it may be challenging for the losing party to obtain special leave to appeal to the High Court unless the High Court is satisfied there is a general matter of public importance or to resolve differences of opinion that needs to be determined, or it is otherwise in the interests of justice. In that circumstance, the decision of the Full Court would be decisive in Australia.

It remains possible that a higher court elsewhere in the world will consider the question of AI inventorship. In the UK, for example, Dr Thaler has sought permission to have his case heard by the Supreme Court, although if permission is granted, it is unlikely to be heard before 2023 at the earliest.

Though it could take weeks or months for the Full Court to reach a decision, it seems certain that its decision will be published before any potential UK Supreme Court proceedings commence. The Full Court of the Federal Court’s ruling is therefore likely be considered the leading judgment on the question of AI inventorship globally, for a time at least.

Co-written by Anna Harley of Pinsent Masons.