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Australian High Court pulls plug on landmark DABUS AI patent application

The question of whether an AI machine can be named as an inventor of a patent has reached the end of the road before the courts in Australia.

The Australian High Court dismissed an application from Dr Stephen Thaler for special leave to appeal the decision of the Full Federal Court, which ruled earlier this year that only natural persons such as a business or individual can be an inventor under Australian patent law.

Sarah Taylor, intellectual property expert at Pinsent Masons, said: “Australia is the first jurisdiction where a final, non-appealable decision has been issued by the courts. This means that unless a similar issue comes before the courts in Australia again, it is down to the Australian parliament to enact reforms to patent laws to accommodate AI machines as inventors.”

The landmark case arose after Dr Thaler, a US-based scientist and technologist, filed an application for an Australian patent that nominated the DABUS AI as the inventor. When the commissioner of patents deemed the application lapsed because Dr Thaler had not nominated a human inventor, he appealed to the Federal Court for judicial review of the decision.

The primary judge found that an inventor under the Australian Patents Act and Australian Patents Regulations could be an AI machine and ordered the decision by the commissioner of patents to be set aside. But when the commissioner appealed to the Full Federal Court, it held that only a natural person – such as a business or individual – can be an inventor under Australian law.

The Federal Court found that “the statutory language, structure and history of the Patents Act, and the policy objectives underlying the legislative scheme” meant that it is only possible for a natural person to be named as an inventor within the statutory regime. It ruled that AI systems cannot be listed as inventors on patent applications in Australia and Dr Thaler’s Australian patent application could not proceed to grant.

Dr Thaler subsequently made an application for special leave to appeal the Full Federal Court’s decision to the High Court of Australia. At the hearing, counsel for Dr Thaler argued that the case turned on the meaning of the word ‘inventor’, which is not defined in the Australian Patents Act. Dr Thaler argued that, properly construed, Section 15 of the Patents Act does not require that the inventor to be a natural person. But the High Court rejected the application for permission to appeal, ruling that it “is not the appropriate vehicle to consider the questions of principle sought to be agitated by the applicant.”

Anna Harley of Pinsent Masons said: “This element of the High Court’s ruling suggests that the issue of inventorship of computer-generated inventions or AI could still be revisited by the Australian courts in the future. The tenet of 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 around the world and litigation is ongoing in a number of jurisdictions.”

Meanwhile, the UK Supreme Court has scheduled a hearing for Dr Thaler’s appeal in the UK instalment of the litigation on 2 March 2023. Mark Marfé of Pinsent Masons said: “It remains to be seen how the UK Supreme Court will resolve the split decision of the Court of Appeal and what guidance the Court will provide for patentees of computer generated or AI inventions in the future.”

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