Stephen L. Thaler
[2021] APO 5
•9 February 2021
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 should not be recorded as part of the name of the inventor. Nothing of substance turns on this point.
[2] Pursuant to regulation 3.2C(4) the direction issued within one month of the date that the applicant complied with subsection 29A(5), and set a period of two months to either provide the name of a natural person who is an inventor or submissions why DABUS can legitimately be recorded as an inventor. If the applicant does not comply with the direction, then the application lapses (regulation 3.2C(5)).
A delegate sought further information on how an artificial intelligence machine might transfer or communicate an invention to a person. The applicant responded:
"In reply to your notice of 25 November 2020, we submit the following.
As you have mentioned, s. 15(1)(c) requires that the applicant 'derives title to the invention from the inventor'. It does not however require the inventor to transfer or communicate the invention to the applicant.
All the provision requires is that the person derive title to the invention by law from the inventor.
The common law confers ownership of anything produced by DABUS to its owner, the applicant. There is a general rule that the owner of a thing is the owner of the fruits of that thing, much like the owner of a fruit tree is entitled to the fruit produced by that tree. The principle of accession or first possession can apply.
If you require anything further, please let us know."
I take it from this correspondence that DABUS is not a person as that term is understood in law: [3] it is not an individual, a body corporate or a body politic.
[3] See section 2C of the Acts Interpretation Act 1901.
The issue
The issue in this case is whether an artificial intelligence machine is capable of being an inventor for the purposes of the Act and Regulations. If an artificial intelligence machine is inherently capable of being treated as an inventor, then the name of a possible inventor has been provided. However, if an artificial intelligence machine is inherently incapable of being treated as an inventor, then the name of an inventor has not been provided. At the formalities stage it is not necessary to consider whether the named entity is an actual inventor.
It is necessary to begin this enquiry at the proper starting point – the Act. I will consider (i) whether the Act specifically addresses whether an artificial intelligence machine is capable of being an inventor, and then (ii) whether the language of the Act is consistent with the inclusion of an artificial intelligence machine as an inventor.
What do the Act and Regulations say?[4]
[4] Relevant parts of the Act and Regulations are reproduced in the Annex at the end of this decision.
Part 1: General approach to interpretation
At the outset it is worth remembering that words in legislation should be given their ordinary meaning, unless that would lead to an inconsistency in the legislation:
"the grammatical and ordinary sense of the words is adhered to, unless that would lead to some absurdity, or some repugnance or inconsistency with the rest of the instrument, in which case the grammatical and ordinary sense of the words may be modified, so as to avoid that absurdity and inconsistency, but no farther."[5]
[5] Grey v Pearson (1857) 10 ER 1216 at 1234, approved in Australian Boot Trade Employés' Federation v Whybrow & Co [1910] HCA 53, (1910) 11 CLR 311 at 341-2.
Additionally, words should be interpreted according to their current meaning, and not restricted to their meaning at the time that the legislation came into operation:
"The approach in this country allows that, if things not known or understood at the time an Act came into force fall, on a fair construction, within its words, those things should be held to be included"[6]
[6] Aubrey v The Queen [2017] HCA 18, 260 CLR 305 at [29].
Consequently, the understanding of inventorship can move with the times provided such an understanding is not inconsistent with other parts of the Act.
Part 2: Definition of "inventor"
The Act and the Regulations do not contain a definition of "inventor". The Act defines "invention" by reference to the Statute of Monopolies (the Statute):
invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention[7]
[7] Schedule 1 of the Act.
The Statute, which dates from the early seventeenth century, provides little assistance, other than the recognition that it is appropriate to grant monopoly rights in a manner of manufacture (i.e. an invention) to "the true and first Inventor and Inventors of such Manufactures".[8] It is not surprising that the Statute provides no assistance in understanding the nature of an inventor.
[8] Section 6 of the Statute.
In Atlantis Corporation Pty Ltd v Schindler[9] Wilcox and Lindgren JJ stated that the ordinary meaning should be adopted:
"The word 'inventor' is not defined. The word bears its ordinary English meaning."
[9] [1997] FCA 1105, 39 IPR 29 at 54.
For the purposes of that decision it was not necessary to go further. Any standard dictionary shows that the traditional meaning of inventor is a person who invents. At the time that the Act came into operation (in 1991) there would have been no doubt that inventors were natural persons, and machines were tools that could be used by inventors. However, it is now well known that machines can do far more than this, and it is reasonable to argue that artificial intelligence machines might be capable of being inventors. I have no evidence whether the ordinary meaning of "inventor", assessed at the present day, can include a machine. But if this were the ordinary meaning, would this be consistent with the other provisions of the Act?
Part 3: Section 2A
The first provision to consider is section 2A which sets out the objects of the Act:[10]
The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.
[10] Section 2A was inserted by the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 and commenced on 27 February 2020.
The purpose of this provision is to guide understanding when the meaning of the legislation is unclear:
"to assist courts in interpreting the Patents Act in cases where the text of the legislation is uncertain or ambiguous"[11]
[11] Explanatory Memorandum, Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 at [14].
This provision was briefly discussed in Calidad Pty Ltd v Seiko Epson Corporation:[12]
"one component of that object is to ensure the efficiency of the market economy … Another is to encourage innovation."
[12] [2020] HCA 41 at [92].
If any of the relevant provisions of the Act are ambiguous with regard to whether an artificial intelligence machine can be an inventor, I will consider these objects of the Act.
Part 4: Section 15
Section 15 is the most important provision to consider:
(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a)is the inventor; or
(b)would, on grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c)derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d)is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
(2) A patent may be granted to a person whether or not he or she is an Australian citizen.
The person who may be granted a patent is known as the "nominated person":
nominated person means the person identified in a patent request as the person to whom the patent is to be granted.[13]
and the applicant is taken to be the nominated person.[14]
[13] Schedule of the Act. After grant, the person who has been granted the patent is the patentee, also defined in the Schedule.
[14] Regulation 3.1A.
The term "person" extends beyond natural persons, and includes "a body politic or corporate as well as an individual".[15]
[15] Section 2C of the Acts Interpretation Act 1901.
It is clear from section 15 in particular that only a person can be a patentee. However, the entitlement of the patentee flows from the inventor, and absent devolution the inventor will become the patentee. That appears to imply that the inventor must also be a person. An alternative interpretation of section 15(1) is that an inventor who is not a person cannot become a patentee, and the patentee must instead be a person who satisfies either paragraph (b), (c) or (d). Is it possible to identify a person who meets the requirements of section 15(1) if the inventor is an artificial intelligence machine?
Section 15 was considered by the Full Court of the Federal Court in JMVB Enterprises Pty Ltd v Camoflag Pty Ltd:[16]
69 The predecessor of s 15(1) of the Act was s 34(1) of the Patents Act 1952 (Cth) ('the 1952 Act'). By s 34(1), both the actual inventor and a person to whom the invention has been communicated by the actual inventor were authorised to make an application for a patent. Similarly, the assignee of the actual inventor could make an application for a patent. Thus, a clear distinction was drawn between the actual inventor, on the one hand, and a person who took an assignment from the actual inventor or a person to whom the invention was communicated by an actual inventor, on the other hand. The actual inventor was defined by s 6 not to include a person merely importing an invention from abroad.
70 Section 15(1) of the Act is, in a sense, a simplification of s 34(1) of the 1952 Act. Section 15(1) contemplates grant of a patent to a person who would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person. A provision, in virtually identical terms, existed under s 34(1) of the 1952 Act. However, the distinction between the assignee of the actual inventor and a person to whom the invention has been communicated by the actual inventor, which was made in s 34(1) of the 1952 Act, is not to be found in s 15(1). Those concepts have been amalgamated into the provision in s 15(1)(c), whereby a patent may be granted to a person who derives title to the invention from the inventor or a person who would, on the grant of a patent for the invention, be entitled to have the patent assigned to that person.
71 The language of s 15(1) evinces a clear intention on the part of the Parliament to limit the grant of a patent, relevantly, to a person who is the inventor or to a person who derives title to the invention from the inventor. There is no warrant for reading the word inventor as meaning anything different from the person who is responsible for making the invention, namely the person who makes or devises the process or product. The word bears its ordinary English meaning (Atlantis Corp Pty Limited v Schindler (1997) 39 IPR 29 at 54 per Wilcox and Lindgren JJ). There is no warrant for reading the term inventor in s 15(1) as including a person to whom the invention has been communicated by the actual inventor.
72 Inventor in s 15(1)(a) refers to the person who makes or devises the invention wherever the invention may be made. It does not include a person who is not the inventor but who first imports the invention into Australia or to whom the invention is first communicated in Australia. To the extent that communication or importing of the invention gives rise to an interest on the part of the communicatee or importer, such that the communicatee or importer can say that the communicatee or importer derives title to the invention from the importer, s 15(1) may be attracted. However, the language of s 15(1) is limited to a person who derives title to the invention from the inventor. Mere communication or importation, without anything further, is not sufficient to give rise to a title on the part of the communicatee or importer. That, of itself, is not sufficient to make Mr Van Baardwyk the inventor."
[16] [2006] FCAFC 141, 70 IPR 77 (JMVB).
Several things of importance to the present case are apparent from JMVB. First, the inventor refers to whoever devises the invention. A person who did not devise the invention but acquired knowledge from the inventor is not themselves an inventor. Second, a person can derive title from the inventor in many ways. Third, it is essential that the derivation of title must be from the inventor. JMVB also suggests that section 15(1)(c) incorporates the traditional category of communicatees as a person who derives title from the inventor.
Part 5: Other provisions that refer to the inventor
I will briefly mention the other parts of the Act that refer to the inventor. Sections 64(2), 101B(2)and 101E(1) refer to "an invention that is the subject of a patent and is made by the same inventor". These provisions make sense whether the inventor is a natural person or an artificial intelligence machine. Section 172(1) says that an "inventor, or an inventor's successor in title, may assign the invention … to the Commonwealth". It is not clear that an artificial intelligence machine can assign or create a successor in title,[17] so this provision would appear to be inapplicable if an artificial intelligence machine were treated as an inventor. Section 182(3) provides an exception to the prohibition in section 182(1) in the situation where the Commissioner, a Deputy Commissioner or an employee is "the inventor". Assuming that the Commissioner, a Deputy Commissioner or employee would be natural persons, inventors in this context would necessarily be natural persons, but there is no implication that the same applies to other provisions. Section 185 is a similar provision that prohibits the preparation of specifications by the Commissioner, a Deputy Commissioner or an employee, unless they are "the inventor". While in this provision the inventor would be a natural person, there is no implication that the same applies to other provisions.
[17] For reasons similar to what is discussed with regard to section 15(1)(c) and 15(1)(d).
The Regulations refer to the inventor only once – in regulation 3.2C(2)(aa). The exact words are "the inventor of the invention". The operation of this provision depends on the understanding of section 15, discussed above.
I conclude that these provisions of the Act and Regulations do not provide any assistance in the present matter.
Consideration
The key consideration is whether section 15(1) is workable in the situation where the inventor is an artificial intelligence machine. Starting with section 15(1)(b), is the owner of an artificial intelligence machine entitled to have a patent assigned to them by the machine? It is an uncontroversial observation that the law does not presently recognise the capacity of an artificial intelligence machine to assign property.[18] Consequently section 15(1)(b) is not consistent with treating an artificial intelligence machine as an inventor.
[18] The traditional understanding is that a machine is property, and property cannot own property or enter into contracts.
Section 15(1)(c) refers to persons who derive title from the inventor. The normal means of deriving title is through assignment. However, as noted in the previous paragraph this is not possible in the case of an inventor that is an artificial intelligence machine. On the other hand, a communicatee does not require a legal transfer from the communicator. In H's Application[19] it is set out by the Assistant-Comptroller that the communicatee acts as the agent for the communicator, and holds the patent in trust for the communicator who has a beneficial interest in the patent:
"An application may properly be made by a communicatee as the result of a communication made for that purpose, and if the patentee abuses the trust, actual or implied, on which the communication was made, no doubt redress must be sought outside the patent system."[20]
"Mr Dicker in applying for the Patent as a communicatee of the Dutch Company is clearly acting in accordance with the well-known practice often followed by patent agents here whereby the beneficial interest in any patent granted upon such an application would belong to the foreign communicator … Mr Dicker should be treated as the agent of or as one with the Dutch Company"[21]
[19] [1956] RPC 197.
[20] At 202-203.
[21] At 395.
Putting to one side whether it is possible to be the agent of a machine,[22] this leads to two important questions when contemplating whether an artificial intelligence machine can be a communicator. First, can a machine communicate information relating to the invention for the purpose of applying for a patent? Second, can an artificial intelligence machine, which cannot be the owner of a patent, have a beneficial interest in a patent? It is open to argument that an artificial intelligence machine could be regarded as communicating information about an invention to the owner of the machine for any and all purposes. It would follow that the information could have been communicated for the purpose of applying for a patent. Turning to the second question, it is inconsistent with my understanding of the law that an artificial intelligence machine can have a beneficial interest in any property. It follows that I cannot see how the owner of a machine can be regarded as the communicatee of an artificial intelligence machine.
[22] If an artificial intelligence machine is not competent to enter into a contract, it is hard to see how it could be competent to appoint an agent.
The applicant suggested that the common law provides an alternative means for the applicant to derive title from an inventor:
"The common law confers ownership of anything produced by DABUS to its owner, the applicant. There is a general rule that the owner of a thing is the owner of the fruits of that thing, much like the owner of a fruit tree is entitled to the fruit produced by that tree. The principle of accession or first possession can apply."[23]
[23] Correspondence dated 9 December 2020.
The principle of accession can be relevantly summarised as the owner of property also owns those things that are produced by that property.[24] The fruit of the fruit tree is an apposite example – the fruit belongs to the owner of the land on which the tree is grown. The principle of first possession states that a person who takes possession of something that is ownerless is entitled to ownership simply by possession.[25] The doctrine of accession seems more relevant to the present case, but the following analysis is the same in both cases. For present purposes, the critical question posed by section 15(1)(c) is whether ownership that is created by accession (or possession) is derived "from the inventor". It seems that ownership automatically vests in the owner of the primary property by virtue of their ownership of that property (or possession of the new property) and is not regarded as transferred from another person. While the principle of accession (or possession) might well deal with the ownership of an invention created by an artificial intelligence machine, it does not do so by conceptually moving title "from" the artificial intelligence machine to the owner of the machine. It follows that the principle of accession (or possession) does not provide a means to identify a person who can be granted a patent that is consistent with section 15(1)(c).
[24] Halsbury's Laws of Australia at [315-350]: "Where personal property is increased, improved upon or added to, whether by natural means such as pregnancy of animals or growth of crops, or artificial means, such as embroidery or attachment such that separation is impracticable, the owner of the original item is entitled to the improved item."
[25] Halsbury's Laws of Australia at [315-330]: "The first person to acquire lawful possession of something that has no owner, for example, fish or wild animals or property that has been abandoned, will become the owner, unless the person is a trespasser, in which case the occupier of the land in question will become the owner."
Section 15(1)(d) relates to the "legal representative of a deceased person". This category is clearly not capable of including the owner of an artificial intelligence machine.
Section 15(1) is clear, but not capable of sensible operation in the situation where an inventor would be an artificial intelligence machine as it is not possible to identify a person who could be granted a patent. It is not necessary to consider section 2A.
I have considered the alternative option that Dr Thaler is the inventor. It seems clear that Dr Thaler asserts that he did not devise the invention but merely acquired knowledge of the invention from the artificial intelligence machine. In the light of JMVB Dr Thaler would not be the inventor.
Conclusion
Section 15(1) is inconsistent with an artificial intelligence machine being treated as an inventor, since it is not possible to identify a person who can be granted a patent.[26] Consequently the present application does not comply with regulation 3.2C. This deficiency has not been corrected and is not capable of being corrected. It follows that the application lapses pursuant to regulation 3.2C(5).
[26] It might be argued that an inventor can be identified, but it is not possible for the applicant to be entitled to apply for a patent. This would not be a formality issue under regulation 3.2C, but would lead to an objection under regulation 3.18. In my opinion, both lines of analysis are valid, and it is not necessary to determine whether one is "more correct". This matter can validly be raised under either regulation 3.2C or regulation 3.18.
Dr S.D. Barker
Deputy Commissioner of Patents
Annex: Relevant provisions of the Act and Regulations
The Act
Section 2A
The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.
Section 15(1)
(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
Section 64(2)
(2) Where:
(a) an application for a standard patent claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor; and
(b) the relevant claim or claims in each of the complete specifications have the same priority date or dates;
a standard patent cannot be granted on the application.Section 101B(2)
(2) The matters in this subsection are whether:
(a) the specification complies with subsections 40(2) to (4); and
(b) the invention, so far as claimed, complies with paragraphs 18(1A)(a), (b) and (c); and
(c) the invention is a patentable invention under subsections 18(2) and (3); and
(d) the use of the invention would not be contrary to law; and
(e) the patent does not claim as an invention a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients; and
(f) the patent does not claim as an invention a process producing such a substance by mere admixture; and
(g) the patent does not contain a claim that includes the name of a person as the name, or part of the name, of the invention so far as it is claimed in that claim; and
(h) the patent does not claim an invention that is the same as an invention that is the subject of a patent and is made by the same inventor, where the relevant claim or claims in respect of each patent have the same priority date or dates; and
(i) the complete specification complies with such other matters (if any) as are prescribed for the purpose of this paragraph.Section 101E(1)
(1) This section applies to an innovation patent if:
(a) after examining the patent under section 101B, the Commissioner decides that he or she is satisfied, on the balance of probabilities, as to the following:(i) the specification complies with subsections 40(2) to (4);
(ii) the invention, so far as claimed, complies with paragraphs 18(1A)(a), (b) and (c);
(iii) the invention is a patentable invention under subsections 18(2) and (3);
(iv) the use of the invention would not be contrary to law;
(v) the patent does not claim as an invention a substance that is capable of being used as food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients;
(vi) the patent does not claim as an invention a process producing such a substance by mere admixture;
(vii) the patent does not contain a claim that includes the name of a person as the name, or part of the name, of the invention so far as it is claimed in that claim;
(viii) the patent does not claim an invention that is the same as an invention that is the subject of a patent and is made by the same inventor, where the relevant claim or claims in respect of each patent have the same priority date or dates;
(ix) the complete specification complies with such other matters (if any) as are prescribed for the purpose of paragraph 101B(2)(i); and
(b) the patent has not ceased under section 143A.
Section 172(1)
(1) An inventor, or an inventor's successor in title, may assign the invention, and any patent granted or to be granted for the invention, to the Commonwealth.
Section 182
(1) The Commissioner, a Deputy Commissioner or an employee must not buy, sell, acquire or traffic in:
(a) an invention or patent, whether granted in Australia or anywhere else; or
(b) a right to, or licence under, a patent, whether granted in Australia or anywhere else.
(2) A purchase, sale, acquisition, assignment or transfer made or entered into in contravention of this section is void.
(3) This section does not apply to the inventor or to an acquisition by bequest or devolution by law.Section 185
The Commissioner, a Deputy Commissioner or an employee must not:
(a) prepare, or help to prepare:(i) a specification; or
(ii) any other document relating to a specification (other than a document which is in an approved form);
unless the Commissioner, Deputy Commissioner or the employee is the inventor in respect of the specification; or
(b) search the records of the Patent Office otherwise than in his or her official capacity.
Schedule of the Act[27]
[27] Schedule 1 of the Act provides a dictionary of certain terms.
invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention
nominated person means the person identified in a patent request as the person to whom the patent is to be granted.
patentee means the person for the time being entered in the Register as the grantee or proprietor of a patent.
The Regulations
Regulation 3.2C(2)
(2) The applicant must:
(a)provide:
(i)an address for service in Australia or New Zealand at which a document under the Act or these Regulations may be given to the applicant personally, or to a person nominated as the applicant's representative; or
(ii)another address for service in Australia to which it is practicable and reasonable for Australia Post, or a person acting for Australia Post, to deliver mail; or
(iii)an address for service in New Zealand to which it is practicable and reasonable for a person providing mail delivery services to deliver mail; and
(aa) provide the name of the inventor of the invention to which the application relates.
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