Posted on 6/8/2021

Rise of the machines!

The Australian Federal Court recently decided that an AI machine could be named as a patent inventor.

An interesting development recently occurred in the patent world that may lead to permanent change or, if successfully appealed, lead to maintenance for some time yet of a cautious, and some would say, outdated position.

A single judge of the Australian Federal Court (the court of first instance of intellectual property matters in Australia) has decided that an artificial intelligence (AI) machine named DABUS can be named as an inventor on a patent application and that inventions created by that AI machine are owned by the machine’s owner.

In the United Kingdom, the UK High Court has rejected the eligibility of DABUS to be named as an inventor. The UKIPO also ran a consultation on AI recently, including questions on whether AI can or should be considered as an inventor.

The question has also been considered in Europe where the European Patent Office rejected the application based on DABUS being named as the inventor, and in the United States where the same occurred.

All of these decisions are in various states of being appealed.

The Australian Patents Act (1990) states that ‘a patent for an invention may only be granted to a person who’ is the inventor or the successor in title to the inventor.  As with many pieces of patent legislation, there is no definition of who (or what) constitutes an inventor. There are many uses of the term ‘person’ in the Australian Patents Act and much caselaw about who is an inventor in various circumstances, but this decision is a landmark decision because it directly addresses the question of whether an inventor is required to be a legal person or not.

Under Australian law, a legal person is an entity with ‘capacity’ to be in a legal relationship. And the concept of ‘capacity’ assumes the ability to have legal relations with other legal persons and describes the ability to create, modify or terminate legal relations.

Historically, legal persons have been either human beings or corporations. There are a number of other legal decisions in Australia which grant the status of a legal person to entities such as the Australian Federal Government and other bodies such as a Rail Transit Authority. There is actually an annex in the Australian Patent Office Patent Manual of Practice and Procedure which identifies a list of company types and bodies which are recognised as being legal persons.

Until this decision, the Australian Patent Office which is responsible for granting patents in Australia, had taken the view that DABUS was not a legal person (despite the fact that various other non-human entities have been recognised under Australian law as being legal persons). These non-human legal persons are known as persona ficta.

Australia is the first country where a decision has been actively made in confirming that the AI machine can be an inventor. A patent has been granted in South African under their regime in which there is no substantive consideration prior to grant and the International Bureau of WIPO, accepted that DABUS could be named as the inventor, cognisant of the fact that this is really a matter for the national laws of each country.  But should a more global view be taken?

Without wishing to enter the uncertain realm of social comment, as even a casual observer knows, the world is changing, and indeed, it has changed so much in the last 30 years.  Ideas that 30 years ago were in the realm of science fiction can now be seen in everyday life.

The legal structures within which the world operates, and the legal definitions used, need to keep pace with the world.  This is particularly the case with intellectual property where its very concept is the creation of something new.

The recognition of an AI machine as an inventor does not need to change the definition of what constitutes a legal person (which has a much wider use and potential impact) but there should be room in patent legislation, in virtually every country, to allow for something new to develop. Indeed, in the intellectual property field, this would seem to be one of the underlying principles of an intellectual property system.

Many will continue to watch the development of the law in this area, not only in Australia (where this decision is likely to be appealed and possibly overturned). For further information about protecting your intellectual property get in touch to speak to one of our attorneys.

Wilson Gunn