The article “One small step for “artificial intelligence”, and a giant leap for the Australian patent system? The Federal Court decision in Thaler v Commissioner of Patents” analyses the reasoning of Beach J in the Thaler decision at first instance, noting that this decision is the first judicial consideration in Australia relating to the impact of artificial intelligence (AI) on the Australian patent system. The author Adam Liberman carefully sets out his analysis and considers that each of the conclusions of his Honour can be genuinely challenged. The author details his concerns that the principles of the decision, if embraced, will lead to greater uncertainty and a lack of coherence in the operation of the Patents Act from a number of legal, commercial and practical perspectives.

The article briefly explains the background to the Federal Court decision, which arose from an application for judicial review of a Patent Office decision rejecting the patent application for failure to comply with the formalities requirement that the patent applicant must provide the name of the inventor. The Patent Office did not accept that Australia’s patent statute and associated regulations permitted an AI system (as opposed to an individual) to be identified as an inventor.

In the article, the author isolates the key elements of Beach J’s reasoning, and proceeds to carefully analyse their merit. The analysis covers each of the key submissions of the Commissioner of Patents (which includes a number of linguistic statutory constructions issues and the objects clause in the Patents Act), his Honour’s consideration of “inventive step” in connection with AI inventorship issues, and the implications of section 15 of Patents Act, which deals with eligibility to be granted a patent.

The article considers his Honour’s dismissal of the Commissioner’s argument that the Federal Court decision in JMVB Enterprises Pty Ltd v Camoflag Pty Ltd ((2006) 154 FCR 348) should be followed by holding that the word “inventor” in the Patents Act bears its ordinary English meaning and refers to the person who makes or devises the invention. The article considers the manner in which his Honour dismisses this argument and argues that the key point of the JMVB decision was not that it was not concerned with AI systems, but rather that it characterised an inventor only in human terms. The author then argues that, contrary to the holding of his Honour, it is equally valid to contend that the concept of inventor as considered by the JMVB case was exhaustive, or at the very least consistent with the Act.

The article discusses his Honour’s treatment of the argument that the ordinary meaning of “inventor” is inherently human, with particular focus on his Honour’s criticisms of the use of dictionary definitions in interpretating the meaning of “inventor” in the statute. The article contrasts his Honour’s approach with other established judicial approaches to using dictionary definitions in statutory interpretation. The article also considers the closely related point that his Honour considers that “inventor” may be characterised as an “agent noun”; that is, a noun that describes the agent who invents, without limitation as to whether that agent is a person or a machine. The author makes the interesting observation that in all his Honour’s examples of agent nouns (e.g. computer, controller, regulator etc.), the dictionary definitions recognise that these nouns may extend to non‑human agents in the appropriate context. In particular, the author notes that dictionary definitions are reflective of common usage, and none of the cited dictionary definitions for “inventor” recognise that an inventor may be a non-human agent that invents.

The article also considers his Honour’s significant reliance on the recently added objects clause in the Patents Act to reach his conclusions and considers additional principles of statutory interpretation relating to objects clauses not referred to by his Honour.

A significant portion of the article is devoted to critiquing his Honour’s treatment of the relationship between section 15 of Patents Act (concerning eligibility to be granted a patent) and the concept of inventorship.

There is a particularly interesting discussion of the concept of possession of an invention giving rise to entitlement under section 15 as distinct from deriving title by way of assignment. The author identifies an important distinction between physical possession and possession of a concept in the mind of a human inventor. The article also identifies a number of practical difficulties with applying the physical possession route to entitlement in circumstances where the owner, controller and programmer of the AI is not all the same person as was the case with Dr Thaler in the instant decision.

Overall, this is a highly interesting and thought-provoking analysis to be commended to practitioners and others interested in examining the development of this area of Australian patent law.

Read the full article in the Journal of Intellectual Property Law & Practice, Volume 17, Issue 2, February 2022.


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Kluwer IP Law
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5 comments

  1. The article in not freely accessible, but the summary presented allows to have a god idea of the arguments raised against AI being named as inventor.
    Accepting AI as inventor would only be possible if a machine could be given legal capacity.
    This idea alone would put the whole legal system upside down, not to say the damages it could cause in the patent system for instance with the appreciation of inventive step, whether or not one applies the problem-solution-approach.
    AI as inventor should remain a playing field for legal scholars but not interfere any further in the patent system.
    Beach J. sounds a bit like Birss J.
    Do we have two Justices wanting to show us something?

  2. Ai as inventor is based on a gross confusion between the output of a neural network and an invention in the meaning of patent law.

    See Rose Hughes’ well-put comment in the IPKat blog (15 sept 2021) :
    “on this Kat, the persistent preoccupation of the IP commentariat with DABUS, has parallels with the parable of The Emperors’ New Clothes. For many of us, AI is a magical black box. Very few in the IP profession or academia have the expertise to determine whether AI is or is not yet capable of AI inventorship. However, in this GuestKat’s opinion, many of us seem surprisingly willing to accept the remarkable claims of AI inventorship, on the basis of little or no evidence (IPKat: here, here and here).”

    It is indeed surprising how gullible many IP specialists and scholars have been by taking seriously the DABUS claims. They should have consulted IA experts before discussing legal issues. It takes little time for an AI expert to
    judge that the description of DABUS on its owner’s website is sheer pseudoscience. This is also clear when reading the DABUS applications.

    1. The two DABUS alleged inventions are not worth batting an eyelid.
      The fractal can is most probably lacking IS and the light emitting source is on the verge of sufficiency.
      I would have expected something better than what DABUS has “enchanted” us with!
      It is for sure a good PR campaign of Mr Thaler!

  3. You must have missed something, the following passages of Mr Thaler’s application EP3563896 are great reading ! Have you ever found “cosmic consciousness tantamount to a deity” in a patent ?

    [0019] Embodiments of the present invention further provide a symbol celebrating the unique tempo by which creative cognition occurs. The algorithmically-driven neural flame may be incorporated within one or more structures that resemble candles or altar fixtures, for instance, to accentuate the light’s spiritual significance. It is noted that that the light source or beacon can incorporate any type of light-emitting device.

    [0020] Such embodiments stem from the notion of one perceiving neural net monitoring another imagining net, the so-called “Creativity Machine Paradigm” (Thaler 2013), which has been proposed as the basis of an “adjunct” religion wherein cosmic consciousness, tantamount to a deity, spontaneously forms as regions of space topologically pinch off from one another to form similar ideating and perceiving pairs, each consisting of mere inorganic matter and energy. Ironically, this very neural paradigm has itself proposed an alternative use for such a flicker rate, namely a religious object that integrates features of more traditional spiritual symbols such as candles and torches.

    [0021] Moreover, in a theory of how cosmic consciousness may form from inorganic matter and energy (Thaler, 19978 , 2010, 2017), the same attentional beacons may be at work between different regions of spacetime. Thus, neuron-like, flashing elements may be used as philosophical, spiritual, or religious symbols, especially when
    mounted atop candle- or torch-like fixtures, celebrating what may be considered deified cosmic consciousness. Such a light source may also serve as a beacon to that very cosmic consciousness most likely operating via the same neuronal signaling mechanism.

  4. I haven’t yet read the JIPLP Paper but nevertheless feel compelled to comment.

    As a patent attorney who has, on innumerable occasions, interviewed a (human) inventor as the first step in my drafting of a patent application (in which I define, in a claim, an inventive concept) I am sceptical about the notion that an AI can be an inventor.

    My questioning of the (human) inventor, my discussion with that human individual, starts out from the embodiment put on the table by the inventor. The embodiment is the diamond within the “balloon” represented by the main claim which will emerge from our discussion.

    In this sense, our conversation is a common voyage of discovery, with which we alight for the first time upon (or “discover”) the inventive concept which I shall define in the claim that I shall subsequently compose. I shall name the human as the inventor of that inventive concept.

    Shall I ever have such a conversation with an AI? I remain sceptical. Shall I ever deem it appropriate to name an AI as “inventor” of that claimed inventive concept? I remain sceptical.

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