AI as the Inventor

During SATLA’s 2021 event ‘AI – A Critical Dissection’, panelists Professor Jeannie Paterson (Co-Director of CAIDE & Associate Dean (JD) at MLS) and Blake Connell (Lawyer, Digital Transformation Expert) drew on recent Federal Court case Thaler v Commissioner of Patents [2021] FCA 879 in their discussion. Drawing on analysis of the case from SATLA sponsor firm Davies Collison Cave, SATLA now delves into the findings of the case and its implications on the pharmaceutical industry

In what later became a worldwide first, Dr Thaler and his agent, Professor Ryan Abbott, filed a PCT application in 2019 naming Dr Thaler as the applicant and “DABUS, The invention was autonomously generated by an artificial intelligence’ as the inventor. This patent application, AU 2019363177, was filed by Davies Collison Cave on behalf of Dr Thaler and originally rejected on the basis of a technicality under the Patents Acts 1990 (Cth) and corresponding Patents Regulations 1991 (Cth), with the Deputy Commissioner of Patents considering that an artificial intelligence system could not be an inventor for the purposes of the application.

Dr Thaler owns the copyright in DABUS’ source code, and owns and operates the computer on which the system operates. While Dr Thaler’s work on the system itself was ‘by no means small’, DABUS generates novel patterns of information and is capable of adapting to new scenarios without additional human input’. The invention output in question was autonomously generated by DABUS’ processes, leading Dr Thaler to take the matter to the Federal Court and raising the question of naming something other than a natural person as an inventor.

The Australian Patents Act 1990 (Cth): can an artificial intelligence machine be treated as an inventor for the purposes of s 15(1)?

Section 15(1) of the Patents Act 1990 (Cth) provides that a patent may be granted to a person who:

1. is the inventor; or 

2. would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or 

3. derives title to the invention from the inventor or the person mentioned in paragraph (b); or

4. is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c). [emphasis added]
   

As Davies Collison Cave comment in their article ‘One small step for man, one giant leap for AI’, there is notably no definition of ‘inventor’ in the Patents Act 1990 (Cth). They further observe the formalities required by the Patents Regulations 1991 (Cth) – namely that reg 3.2C(2)(aa) requires the name of the inventor of the invention to which the application relates – also avoiding the definition of ‘inventor’.

Applying to the Federal Court for Judicial Review of the Deputy Commissioner’s Decision, under s 5(1) of Administrative Decisions (Judicial Review) Act 1977 (Cth) and s 39B of the Judiciary Act 1903 (Cth), Dr Thaler argued that the Deputy Commissioner misconstrued s 15(1), and the Act and Regulations generally, in finding them to be inconsistent with an artificial intelligence system being treated as an inventor. 

Setting aside the Deputy Commissioner’s determination, Justice Beach emphasised three main considerations:

1. An inventor is an agent noun: in agent nouns, the suffix ‘or’ or ‘er’ indicates that the noun describes the agent that does the act referred to by the verb to which the suffix is attached. The agent in such cases could be a person or a thing, such as ‘lawnmower’ or ‘collector’, meaning that if an artificial intelligence system is the agent that invents, it can be described as ‘inventor’.
   

2. It reflects the reality in terms of many otherwise patentable inventions, where it cannot sensibly be said that a human is the inventor. The inverse poses a practical problem: in the case where AI has created the invention but there is no “inventor” and it cannot be patented at that time, a human observing the invention output could ‘discover’ the output and assert they are the inventor because of their discovery. As Justice Beach observes, ‘[t]hat would be an odd outcome to say the least … the antithesis of promoting innovation’.
   

3. Nothing in the act dictates the contrary conclusion. Specific to the relevant subsection, Beach J finds that Dr Thaler could be granted a patent, because his application prima facie falls within s 15(1)(c) having derived title to the invention from inventor DABUS. The language of the subsection recognises the rights of a person who derives title to the invention from an inventor by a broad range of means through which an interest may be conferred. 
   

He also notes that Dr Thaler could be granted a patent by virtue of s 15(1)(b), drawing analogous relationships to the progeny of animals or the treatment of fruit or crops produced by the occupier of the land, and the product of employee’s work where labour is undertaken in the course of the employee’s duties. 

AI as the inventor: implications on the pharmaceutical industry

Among other key takeaways, including Beach J’s considering of DABUS as semi-autonomous, Davies Collison Cave addresses that the decision ‘may have important implications for other technologies and scientific fields, particularly the pharmaceutical industry, which relies increasingly on AI at all stages of the drug development process’. 

Drawing on discussions from the Joint Institute for Innovation Policy ‘Trends and Developments in Artificial Intelligence: Challenges to the Intellectual Property Rights Framework, Justice Beach identifies the significance of AI in pharmaceutical research, from its applications in finding molecular targets to its use in drug repurposing and vaccine development. He signifies that recent AI advances could accelerate drug discovery, with digitisation of existing scientific knowledge enabling discovery of new compounds that could address certain disease targets as well as advances in machine learning aiding the early stages of drug development before clinical trials.

These examples, J Beach finds, are merely that and are capable of being multiplied. ‘No narrow view should be taken as to the concept of “inventor”’, he finds, ‘and to do so would inhibit innovation not just in the field of computer science but all other scientific fields which may benefit from the output of an artificial intelligence system’.

Commissioner to appeal

The Federal Court’s decision is now pending appeal. The Commissioner of Patents maintains that ‘the legislation is incompatible with permitting an AI to be an inventor, and that the issue is one of public importance’.