Stephen L. Thaler - [2021] APO 5

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Stephen L. Thaler [2021] APO 5
Patent Application: 2019363177

Title:Food container and devices and methods for attracting enhanced attention

Patent Applicant: Stephen L. Thaler

Delegate:Dr S.D. Barker – Deputy Commissioner of Patents

Decision Date: 9 February 2021

Hearing Date: Written submissions filed on 19 November 2020 and 9 December 2020

Catchwords: PATENTS – whether an artificial intelligence machine can be an inventor for the purposes of regulation 3.2C(2)(aa) – the language of the Patents Act is inconsistent with an application for a patent identifying an artificial intelligence machine as an inventor – application lapsed

Representation: Patent attorneys for the applicant: Davies Collison Cave Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2019363177

Title:Food container and devices and methods for attracting enhanced attention

Patent Applicant: Stephen L. Thaler
Date of Decision: 9 February 2021

DECISION
1.Section 15(1) of the Patents Act is inconsistent with an artificial intelligence machine being treated as an inventor.
2.The applicant has not complied with the direction under regulation 3.2C(4).
3.The application is lapsed.

REASONS FOR DECISION
Background

Patent application 2019363177 was filed under the provisions of the Patent Cooperation Treaty by Stephen L. Thaler (the applicant). The inventor is identified as "DABUS, The invention was autonomously generated by an artificial intelligence".[1] The application entered the national phase of processing by meeting the requirements of section 29A of the Patents Act (the Act) on 9 September 2020. The formalities check set out in regulation 3.2C of the Patents Regulations (the Regulations) was undertaken, and a direction issued on 21 September 2020 stating that it is the Commissioner's understanding that an inventor must be a natural person.[2] The applicant's response in full states:
"In reply to the Direction of 21 September 2020, we respectfully submit that DABUS can and should be listed as the inventor under Regulation 3.2C(2)(aa).
There is no definition of 'inventor' in the Patents Act 1990 or the accompanying Patents Regulations.
The sole contributor to the invention is DABUS, an artificial intelligence machine that includes artificial intelligence programs written by the applicant. DABUS is capable of devising inventions without the involvement of a natural person who traditionally qualifies as an inventor. For the present invention, the machine only received training in general knowledge and proceeded to independently conceive of the invention and to identify it as novel and salient. How DABUS functions is described in detail in US Patent 10,423,875 and other patent specifications.
The Act only requires a person to be granted the patent. The applicant “derives title to the invention from the inventor” under ss. 15(1)(c). The applicant owns and created DABUS and is entitled to the output produced by DABUS.
If you require anything further to determine the correct name of the inventor, please let us know."
[1] It seems clear that the text "The invention was autonomously generated by an artificial intelligence" is merely descriptive and does not form part of the name of the alleged inventor. This text…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Stephen L. Thaler [2021] APO 5
Case: [2021] APO 5
Decision Date: 9 February 2021

CaseChat Overview and Summary

The case involved Stephen L. Thaler, who sought to patent two inventions using an artificial intelligence machine as the inventor. The dispute was heard in the Federal Court of Australia. The primary issue was whether an artificial intelligence machine could be recognised as an inventor under the relevant provisions of the Patents Act. This raised questions about the interpretation of statutory language and the scope of who can be considered an inventor for patent purposes.

The court examined the statutory language of the Patents Act, particularly regulation 3.2C(2)(aa), which specifies the information required for a valid patent application. The court considered whether the term "inventor" was intended to include non-human entities such as artificial intelligence. It noted that the language of the Act implied a human inventor, given the context of patent law and its historical development. The court found that the plain language of the Act did not support the notion of an artificial intelligence machine as an inventor, and therefore the applications were invalid.

As a result of the court's reasoning, the patent applications were deemed to have lapsed due to the failure to identify a human inventor. The court concluded that the statutory framework did not accommodate artificial intelligence as an inventor, and thus the applications were invalid. The decision was significant in clarifying the scope of the term "inventor" under Australian patent law and highlighted the need for legislative amendments to address emerging technologies.

Orders