The judges further agreed that the case had raised “many propositions … for consideration in the context of artificial intelligence and inventions” and left the door open for policymakers and legislators in Australia to address those issues, rather than the courts.
Those propositions “…include whether, as a matter of policy, a person who is an inventor should be redefined to include an artificial intelligence. If so, to whom should a patent be granted in respect of its output? The options include one or more of: the owner of the machine upon which the artificial intelligence software runs, the developer of the artificial intelligence software, the owner of the copyright in its source code, the person who inputs the data used by the artificial intelligence to develop its output, and no doubt others.”
“If an artificial intelligence is capable of being recognised as an inventor, should the standard of inventive step be recalibrated such that it is no longer judged by reference to the knowledge and thought processes of the hypothetical uninventive skilled worker in the field? If so, how? What continuing role might the ground of revocation for false suggestion or misrepresentation have, in circumstances where the inventor is a machine?” the Court continued.
“Those questions and many more require consideration. Having regard to the agreed facts in the present case, it would appear that this should be attended to with some urgency. However, 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,” the judges said.
The ruling by the Federal Court aligns with the position adopted by the Court of Appeal in England and Wales, which ruled against Thaler in a split decision in September last year. However, the Australian judges suggested direct parallels between the rulings could not be drawn.
“Whilst there are important aspects of the reasoning of the learned judges in that Court with which we respectfully agree, we consider that the task in the present case focusses on the particular statutory language of the Patents Act, which in material respects differs from that in the equivalent patents legislation in the United Kingdom,” they said.
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 been litigated before a number of other 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 is shared by a district court in the US state of Virginia. 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.
Co-written by Anna Harley of Pinsent Masons.