Designs ACIP amendments in force

IP Australia advises that the final provisions of the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 came into force last Thursday, 10 March 2022.[1]

Included amongst the important reforms which came into force are:

  • the 12 month grace period (Sch. 1);
  • the new exemption from infringement for prior use (Sch. 2)
  • the removal of the “publication” option and automatic request for registration 6 months after filing (if not requested earlier): (Sch. 3)
  • protection from pecuniary remedies for infringement before publication of the design (Sch. 4)
  • exclusive licensees can sue for infringement (Sch. 5).

Most of these amendments apply to applications for registration made after the amendments commenced.

The “grace period” excludes from the prior art base for novelty and distinctiveness publications and uses by a “relevant entity” in the 12 months before the priority date of the application.

For this purpose, a “relevant entity” means the owner of the design, a predecessor in title and the designer (the person who created the design).

Publication of an application to register the design by a Designs Office is not excluded from the prior art base, however, on the basis that the main point of the grace period is to protect against inadvertent disclosures and not deliberate attempts to obtain registration.

The grace period is available only to applications made on or after commencement. However, there is a further wrinkle: the “grace period” applies (or appears to apply) only in respect of public acts or publications which occur on or after commencement too.

New s 17(1A) provides:[2]

Subsection (1) applies in relation to a publication or use that occurs on or after the commencement of Schedule 1 to the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (whether the 12?month period referred to in that subsection begins before, on or after that commencement).

Things might have been clearer if the words in parentheses had not been included in this exercise in plain English. But they are there. The wording at [19] in the Explanatory Memorandum is clearer:

New subsection 17(1A) provides that the new grace period provided for in new subsection 17(1) only applies to a publication or use that occurs on or after commencement of this Schedule. This is the case regardless of whether the relevant 12-month period would begin before, on or after commencement of the Schedule. This is intended to provide clarity for users of the design system that any publication or use prior to commencement will not be eligible for the new grace period.

That is, it appears the grace period will not be a full 12 months until 10 March 2023.

Another wrinkle relates to third party prior art. If the design owner (or other “relevant entity”) published the design before the publication of the third party’s prior art, the third party is presumed to have derived the design from the design owner and so it does not count as prior art. It is a presumption only. So, if the third party can prove it derived the design independently of the design owner (or other “relevant entity”) the third party’s design goes back into the prior art. See new s 17(1C).

The idea here is that how the third party derived its design is something essentially within the third party’s knowledge and so the third party has the onus of proving independent derivation.

The “prior user” exemption from infringement (new s 71A) works (if that is the right word) in much the same way as s 119 of the Patents Act. This requires the claimant to have taken “definite steps (whether contractually or otherwise)” to make, import, sell, offer to sell etc. a product which is identical to or substantially similar in overall impression to the registered design. It is an “exemption” rather than a “defence” as, amongst other things, it is transferrable.

In what should be a welcome development, IP Australia will be conducting a number of webinars to “walk through” the changes. You can register here.


  1. According to s 2 of the Act, Schedules 1 to 6 and 7 part 3 were to commence on a day to be fixed by Proclamation or, if not proclaimed earlier, on the day after 6 months from the date of Royal Assent – 10 September 2021.  ↩
  2. A consolidated version of the Act as amended hasn’t been published yet and hasn’t made its way on to Austlii or Jade (at least at the time or writing).  ↩

Designs ACIP amendments in force Read More »

Season’s Greetings!

Season’s Greetings! Read More »

It’s Christmas – so it must be time for copyright reforms

At long last and just in time for Christmas, the Communication Branch of the Department of Infrastructure, Transport, Regional Development and Communications has published the long awaited exposure draft Copyright Amendment (Access Reform) Bill 2021 and – a bit of a surprise – a Review of Technological Protection Measures Exceptions.

To quote from the “have your say” page, the exposure draft amendment bill includes 5 main reform measures:

  • Schedule 1—Limitation on remedies for use of orphan works
  • Schedule 2—New fair dealing exception for non-commercial quotation
  • Schedule 3—Update and clarify library and archives exceptions
  • Schedule 4—Update and restore education exceptions
  • Schedule 5—Streamline the government statutory licensing scheme.

There are also five, 5!, schedules of “additional minor and technical amendments”!

What follows is a very rough and ready summary of a couple of “bits”.

Quotation

The exposure draft posits a new fair dealing defence in respect of public copyright material for the purposes of either non-commercial quotation or quotation for a commercial purpose in relation to a product or service if the quotation is immaterial to the value of that product or service.

The defence would be available only to libraries, archives, educational institutions, the Commonwealth or a State, or someone authorised by them, or a person or organisation for the purpose of research.

There are also other conditions.

The discussion paper includes some examples of things which might fall within or without the defence.

Orphan Works

The exposure draft would introduce a new defence to infringement where someone reproduces etc. copyright material after a reasonably diligent search has failed to identify the copyright owner or, if the owner be identified, they cannot be contacted.

If the author is known, he or she or they must also be identified in the reproduction etc. where that is reasonably practicable.

Then, if the copyright owner pops up, either the owner or the user can apply to the Copyright Tribunal for orders to fix the terms of use. The Tribunal may make orders only to the extent it considers them reasonable.

TPM Review

Under the Australia-US Free Trade Agreement, Australia is required to review its laws relating to technological protection measures every four years.

Apparently, the last review was in 2017. So it’s time for another one.

The discussion paper does say the review is to look at whether the existing exceptions are fit for purpose, need to be repealed or modified and whether new exceptions are required.

If you want a new exception, s 249 sets out criteria that need to be satisfied before the Minister could implement it. These include provision of credible evidence about the matters set out in that provision.

If you are moved to provide submissions, they should be sent in by 11 February 2022.

Have your say page

Exposure draft  Copyright Amendment (Access Reform) Bill (pdf)

Discussion paper (pdf)

There are also Word versions of the exposure draft bill and the discussion paper available via the Have your say page.

It’s Christmas – so it must be time for copyright reforms Read More »

The English Court of Appeal rejects AI too

The Court of Appeal has dismissed by a 2:1 majority Dr Thaler’s appeal from Marcus Smith J’s decision rejecting the patent applications on the grounds that DABUS is not an inventor.

A recap

In late 2018, Dr Thaler applied for the grant of two patents, GB18116909.4 entitled “Food Container” concerning the shape of parts of packaging for food and and GB1818161.0 entitled “Devices and Methods for Attracting Enhanced Attention” for a form of flashing light.

In his application forms, Dr Thaler named DABUS as the inventor and stated that his entitlement arose “by ownership of the creativity machine ‘DABUS’”.

In later, amended forms, Dr Thaler explained “the applicant identified no person or persons whom he believes to be an inventor as the invention was entirely and solely conceived by DABUS”.

Patents Act 1977 (UK) ss 7 and 13

Section 7 of the UK’s Patents Act 1977 defines who is entitled to apply for and obtain a patent:

7 Right to apply for and obtain a patent.

(1)Any person may make an application for a patent either alone or jointly with another.

(2)A patent for an invention may be granted—

(a)primarily to the inventor or joint inventors;

(b)in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;

(c)in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;

and to no other person.

(3)In this Act “inventor” in relation to an invention means the actual deviser of the invention and “joint inventor” shall be construed accordingly.

(4)Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.

Although the wording is somewhat different, ss 13(1) and (2) of the UK Act appear to be similar in effect as, respectively, s 29 and s 15 of the Australian Act.[1]

Section 13 of the UK Act further provides:

13 Mention of inventor.

(1)The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with rules in a prescribed document.

(2)Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement—

(a)identifying the person or persons whom he believes to be the inventor or inventors; and

(b)where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent;

and, if he fails to do so, the application shall be taken to be withdrawn.

(3)Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time apply to the comptroller for a certificate to that effect, and the comptroller may issue such a certificate; and if he does so, he shall accordingly rectify any undistributed copies of the patent and of any documents prescribed for the purposes of subsection (1) above.[2]

Can an AI be an inventor?

All three judges were in agreement that DABUS, as an AI, cannot be an inventor because an inventor must be a person.

At [116] Arnold LJ, who gave the lead judgment for the majority, said:

In my judgment it is clear that, upon a systematic interpretation of the 1977 Act, only a person can be an “inventor”. The starting point is section 130(1) which provides that “‘inventor’ has the meaning assigned to it by section 7 above”. Section 7(3) provides that “‘inventor’ in relation to an invention means the actual deviser of the invention”. A dictionary definition of “deviser” is “a person who devises; a contriver, a planner, an inventor” (Shorter Oxford English Dictionary, 5th edition, Oxford University Press, 2002). Section 7(2) provides that a patent may be granted (a) “primarily to the inventor or joint inventors”, (b) “to any person or persons who …”, (c) “the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above”, but “to no other person”. As Lord Hoffmann explained in Yeda Research and Development Company Ltd v. Rhone-Poulenc Rorer International Holdings [2007] UKHL 43, [2007] Bus LR 1796 at [20], this is “an exhaustive code”. It is clear from this code that category (a) must consist of a person or persons, just as much as categories (b) and (c) do. Section 7(4) creates a presumption that “a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent”. Again, it is plain that only a person can be entitled under section 7(2), and thus only a person can fall within paragraph (a).

Similarly, at [50] – [51], Birss LJ said:

50 Second, a purpose of the definition of inventor in section 7(3) was to change the law, from the old law going back to the Statute of Monopolies, and to abolish the idea of a true and first inventor who could be anyone other than the actual deviser of the invention. The concept of the actual deviser of the invention was already known to United Kingdom patent law from the 1949 Act (s16). It was the person who actually devised the invention. The contrast was between that person and others who had not done so but were regarded as the true and first inventor, e.g. importers. So in Yeda paragraph [18] the contrast was drawn between the actual deviser and a pretended or deemed deviser.

51 The rest of the 1977 Act is drafted on the footing that the inventor is a person. For example s7(2)(c) of the 1977 Act refers to “person or persons mentioned in paragraph (a) or (b)” and s13 of the Act require an applicant to identify the “person or persons whom he believes to be the inventor or inventors”. However, for what it is worth, I would hold that the mechanism by which the inventor is a person in the scheme of the 1977 Act is because the “actual deviser” is a person and so, by definition in s7(3), is the inventor.

and at [54] – [55]:

54 I conclude that the answer to the first question is a simple one. Within the meaning of the 1977 Act the “inventor” is the person who actually devised the invention.

55 That conclusion is arrived at without any need to examine the policy arguments raised by both parties. Machines are not persons. The fact that machines can now create inventions, which is what Dr Thaler says happened in this case, would not mean that machines are inventors within the meaning of the Act. Assuming the machine is the entity which actually created these inventions, it has no right to be mentioned as the inventor and no right to employee’s compensation under s39 (which no doubt it never had anyway).

At [102], Lady Justice Elisabeth Laing explained:

Both Birss LJ and Arnold LJ agree that the clear effect of the relevant provisions of the 1977 Act is that an inventor must be a person. I also agree with that conclusion. Rights are a consistent theme which runs through section 7. Only a person can have rights. A machine cannot. The premise of section 7 is that an inventor is and can only be a person. A patent can be granted ‘primarily to the inventor’, and only to someone else in the circumstances described in section 7(2)(c) and (d). A patent is a statutory right and it can only be granted to a person. That means that the effect of section 7(2)(a) is that the inventor must be a person. Only a person can make, before the invention is made, an enforceable agreement by which he is entitled to the whole of the property in the invention (other than equitable interests) (section 7(2)(b)). Such an agreement can only be made with another person. Only a person can have a successor in title (section 7(2)(c)). It follows that, absent a statutory deeming provision, it is simply not possible, as a matter of law, for Dabus to be an ‘inventor’ for the purposes of section 7. Nor, for the reasons given by Arnold LJ, has Dr Thaler identified any enactment of rule of law by which he is entitled to that property (even if he could, that would not help his case, because it would not overcome the hurdle that Dabus in not an inventor for the purposes of the Act). Only a person has a right to be named as an inventor (section 13(1)). Section 13(2)(a) also assumes that the inventor is a person. Arnold LJ gives many other examples of provisions in the 1977 Act which support that construction.

Dr Thaler was not entitled to the inventions

In the Court of Appeal, Dr Thaler appears to have shifted ground from the position taken before Marcus Smith J.

Dr Thaler accepted he was not entitled to the inventions under s 7 as the inventor. At [124], Arnold LJ recorded that Dr Thaler also abandoned his claim to entitlement on the basis of an assignment from DABUS.[3] Instead, Dr Thaler based his entitlement on the doctine of accession. Dr Thaler’s argument was that as the owner of DABUS he was the owner of the inventions it produced just as the owner of a cow is the owner of its calves.

At [130], Arnold LJ cited Blackstone for the common law definition of the doctrine of accession on which Dr Thaler relied:

“The doctrine of property arising from accession is also grounded on the right of occupancy. By the Roman law, if any given corporeal substance received afterwards an accession by natural or by artificial means, as the growth of vegetables, the pregnancy of animals, the embroidering of cloth, or the conversion of wood or metal into vessels and utensils, the original owner of the thing was intitled by right of possession to the property of it under such it’s statement of improvement; but of the thing itself, by such operation, was changed into a different species, as by making wine, oil, or bread, out of another’s grapes, olives, or wheat, it belonged to the new operator; who was only to make a satisfaction to the former proprietor for the materials, which he had converted. And these doctrines are implicitly copied and adopted by our Bracton, in the reign of king Henry III; and have since been confirmed by many resolutions of the courts.”

Arnold LJ explained that the doctrine of accession was rooted in the principle of “dominion” – exclusive possession: a person who has exclusive possession of a tangible (the cow) which produces a tangible (a calf) will generally also have exclusive possession of the tangible produced.

However, an invention is information, an intangible. As an intangible, Arnold LJ noted at [133] it was distinguishable from a tangible on the basis that intangibles are non-rivalrous goods: they were capable of simultaneous consumption by more than one person. Accordingly, a new intangible is not capable of exclusive possession.

Furthermore, Dr Thaler was forced to accept that the doctrine of accession did not apply to at least some situations where an intangible was produced by a tangible. At [135], Arnold LJ gave the example of a photograph taken by A using a camera owned by B: subject to an agreement to the contrary, the copyright in the photograph would be owned by the photographer, not the owner of the camera.[4]

Arnold LJ considered that Dr Thaler’s arguments were more about what the law should be rather than what it is. As to what it is, his Lordship said at [136] it ran into two obstacles:

…. As matters stand, it seems to me that the argument faces two obstacles. The first is that it pre-supposes that a machine can be an inventor for the purposes of the 1977 Act. The second is that I cannot see any basis in current law for a person to have a legal right to stand in the place of a machine with respect to the right to apply for a patent, because that pre-supposes that the machine would otherwise have that right, but as noted above machines do not have rights. A point which underlies both these obstacles is that modern patent law is almost entirely a creature of statute.

Accordingly, Dr Thaler’s applications should be rejected.

Birss LJ dissented

Despite agreeing that an AI was not an inventor for the purposes of the Patents Act 1977, Birss LJ would have allowed the appeal. For his Lordship, it was no part of the Comptroller’s role under section 13 to inquire into whether DABUS was in fact an inventor.

To reach this conclusion, Birss LJ examined the history of s 13 and its predecessor under the Patents Act 1949, s 16. Section 16 of the 1949 Act wrought a number of changes. One of those was to permit assignment of the right to apply for a patent which in turn brought in the requirement that the assignee applicant provide an assent from the inventor.

The Banks Committee, however, reported that these arrangements had led to a number of problems. One problem was the difficulty in confidently identifying the inventors.[5] A second problem was that at the examination stage the Comptroller was in no position to check the accuracy of claims to inventorship or assignment. At [44], Birss LJ explained that the Banks Committee had recommended abolishing declarations of inventorship and assent:

This, we think, would simplify the procedure for applicants, protect patentees against invalidation of their patents through inadvertent error in naming inventors, give recognition to the fact that the Patent Office is in no position to check the completeness of declarations of assent and inventorship at present required (which therefore provide no real safeguard against wrongful obtaining of patents), and abolish the anomaly of “communicated” invention. We realise, however, that safeguards are necessary to protect the interests of inventors, and would stress that making of any application by a person other than the inventor should not imply in any way that the inventor has assented to the making of the application or acknowledged the right of the applicant to make it. Furthermore, since we believe that it is most important that the contribution of the inventor, where he is not the applicant, should not be overlooked, we recommend that the applicant, both in Convention and in non-Convention applications, should be required to name the person(s) believed to be the inventor(s), who would then be named in the published specification, but that the fulfilling of this requirement should not prejudice the right of any other person to apply under section 16 of the [1949] Act to be mentioned in the patent, nor should a bona fide error in the naming of inventors invalidate a patent. Where disputes arise over ownership of applications or patents, a new procedure will be necessary for their resolution, and this we recommend in Chapter 13.

Having regard to this history, Birss LJ considered at [58] – [59] that the requirements of s 13(2)(a) would be satisfied so long as the applicant identified who the applicant believed was the inventor. Correspondingly, s 13(2)(b) merely required the applicant to identify the basis on which the applicant claimed derivation from the inventor.

It was no part of the Comptroller’s role, at this stage, to investigate whether or not the identified inventor was in fact legally an inventor or the identified basis of derivation was legally effective. Any other approach would resurrect the very problems encountered under the 1949 Act [s 16][49uk].

In light of this conclusion, his Lordship did not consider Dr Thaler’s arguments based on the doctrine of accession.

With respect, a difficulty with Birss LJ’s approach is that an application would proceed to grant and could be asserted against third parties, or block subsequent applications, unless someone came forward to challenge the grant. And under the UK Act it seems objections on the ground of entitlement can be brought only by someone else claiming entitlement: See Birss LJ at [70] citing s 72.

Arnold LJ (with the agreement of Lady Justice Elisabeth Laing) accepted that the role of the Comptroller under s 13 was limited. His Lordship considered, however, rejection of Dr Thaler’s application did not involve such issues. Rather, the Comptroller took the information provided by Dr Thaler at face value and on its face that information failed to identify the person who was the inventor or any basis operative to transfer the rights of an inventor to Dr Thaler.[6]

As the applications failed to comply with two important statutory requirements, therefore, Arnold LJ held at [148] that the Comptroller was right to reject them.

A moral right

Before concluding, it is worth also noting that the Court of Appeal recognised that the requirement to identify the inventor is really a species of moral right. As Arnold LJ noted at [121], a paternity right: the right to be identified as the creator. At [44], Birss LJ noted the Banks Committee’s recognition that:

it is most important that the contribution of the inventor, where he is not the applicant, should not be overlooked, we recommend that the applicant, both in Convention and in non-Convention applications, should be required to name the person(s) believed to be the inventor(s), who would then be named in the published specification….

Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374 (Arnold and Elisabeth Laing LJJ, Birss LJ dissenting)


  1. See Foster’s Australia Limited v Cash’s (Australia) Pty Ltd [2013] FCA 527. Section 31 extends s 29 to joint applicants.  ?
  2. Section 13 of the UK Act does not have a counterpart in the Australian Act. However, ss 29(4A) and (4B) require applications to be in the approved form – which requires the inventor to be identified and reg. 3.2C(2)(aa) requires applications under the PCT to identify the inventor.  ?
  3. Before Beach J in Australia, Dr Thaler also accepted that, as an artificial intelligence system is not a legal person, DABUS could not legally assign the invention: see e.g. [115].  ?
  4. In Australia, see Copyright Act 1968 s 35, bearing in mind there are exceptions for works made in the course of employment, taking of photographs for a private or domestic purpose or the exception for photographs taken by journalists for newspapers etc.  ?
  5. A problem finally addressed in the Patents Act 1990 (Cth) by the enactment in the “Raising the Bar” Act of s 22A and s 138(4).  ?
  6. At [108], Lady Justice Elisabeth Laing explained “It will be clear from what I have already said that I do not agree that section 13(2)(a) only requires an applicant to ‘state their genuine belief about who the inventor was’ (judgment, paragraph 60). Rather, it expressly requires the applicant to identify the person who, he believes, is the inventor. That is a different requirement, and it is not met by a statement that the applicant genuinely believes that the invention was devised by a machine ….” (emphasis supplied)  ?

The English Court of Appeal rejects AI too Read More »

Should AI systems be classifiable as patent inventors?

Should AI systems be classifiable as patent inventors? Read More »

The ACIP Designs Amendments have been enacted

On 10 September 2021, the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 received Royal Assent, becoming the 100th statute enaceted by the Commonwealth Parliament this year.[1]

As the marvellously evocative title indicates, this Act amends the Designs Act 2003 to implement the recommendations of ACIP’s Review of the Designs System: Final Report from March 2015 which have been accepted.

Two amendments come into force straight away. The rest (unless proclaimed earlier) come into force 6 months (and a day) later – 11 10 March 2022.

Amendments with immediate effect

So, for design applications made on or after 11 September 2021, the distinctiveness of a design and its infringement will now be tested by the standard of “the familiar person”.[2] That is, s 19(4) has been amended to test distinctiveness:[3]

(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person (the familiar person) who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user) (whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates).

Australia’s adventure in testing the validity and infringement of a registered design by somethin akin to the EU’s “informed user”, therefore, has come to an end.

Also, s 93(3) has been amended so that the registration of a design can be revoked on lack of entitlement grounds only if the Court is satisfied that it is just and equitable to do so in all the circumstances. This brings revocation on entitlement grounds in line with the Patents Act.[4] The idea here being to ameliorate the harshness of the sanction to validity in the case of essentially honest mistakes.

This amendment will apply to any applications to revoke a registered design made on or after 11 September 2021. It does not matter when the design was registered.[5]

Amendments coming into force later

The remainder of the amendments come into operation later: If not earlier proclaimed, on the day after six months from Royal Assent.

A number of these have been covered in earlier posts. They include:

  • the 12 month grace period for publications or public uses made before the priority date by or with the consent of the registered owner, a predecessor in title or “the person who created the design” (Schedule 1);
  • conferring power on exclusive licensees to sue for infringement (Schedule 5);
  • the introduction of an exemption from infringement on the grounds of prior use (Schedule 2);
  • the application process will be changed so that, if a request for registration is not filed with the design application, a request will be deemed to have been made 6 months from the application date (if not made earlier or the application has not been withdrawn).[6] In other words (and assuming the application passed the formalities test), a design will be registered automatically 6 months after the application is filed rather than lapse if no request has been filed (Schedule 3);
  • relief from liability for infringement for acts done before the design was registered (i.e. between the priority date and publication of the design) (Schedule 4);
  • removal of the unused option to publish a design rather than register it (Schedule 3).

There are also some other, technical amendments.

Some care will be needed with the “transitional provisions”. For the most part, the amendments will apply only to design applications made on or after the commencement of the relevant amendments.

Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021

Explanatory Memorandum

Addendeum to the Explanatory Memorandum

The ACIP Report

Lid dip to Brett Massey at IP Australia for drawing my attention to the correct date the second round commence (assuming not proclaimed earlier).


  1. At the time of writing, the Act does not appear to be on Austlii, but you can find it here.  ?
  2. Schedule 7 Part 1 item 5(1) and (2).  ?
  3. Text in italics inserted by the amendment. This is my mark up I’m afraid.  ?
  4. Patents Act 1990 s 22A and s 138(4).  ?
  5. Schedule 7 Part 2 item 8 and Explanatory Memorandum para 248.  ?
  6. The “relevant period” is to be prescribed in the regulations but the helpful flow chart included in the Explanatory Memorandum indicates the “relevant period” will be 6 months.  ?

The ACIP Designs Amendments have been enacted Read More »

More on DABUS – this time in Old Blighty

Ann Dufty, whom many of you will know, has pointed out to me that Dr Thaler’s lack of success in the UK was not limited “merely” to rejection by UKIPO. Dr Thaler’s patent application has been rejected by Marcus Smith J sitting in the High Court of England and Wales.

Under the Patents Act 1977 (UK) s 7(2) is in similar terms and, one might say, to the same effect as s 15 of the Australian Act:

(1) Any person may make an application for a patent either alone or jointly with another.

(2) A patent for an invention may be granted –

(a) primarily to the inventor or joint inventors; 
(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom; 

(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned; and to no other person.

(3) In this Act ‘inventor’ in relation to an invention means the actual deviser of the invention and ‘joint inventor’ shall be construed accordingly.

(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.”

Sub-section 7(3) does not have an obvious counterpart in the Australian legislation but, DABUS aside, one would think Australian law is to the same effect. Putting to one side the question whether or not an AI can be an inventor, Australian law would consider the person who made the invention the inventor.[1]

In the English case, Dr Thaler’s substantive arguments were essentially the same as those advanced in Australia.

As to the meaning of “inventor”, Marcus Smith J at [45(3)] first noted that Lord Hoffmann in Yeda had agreed with Laddie J’s view that an inventor was a “natural person”:

The inventor is defined in section 7(3) as “the actual deviser of the invention”. The word “actual” denotes a contrast with a deemed or pretended deviser of the invention; it means, as Laddie J said in University of Southampton’s Applications [2005] RPC 220, 234, the natural person who “came up with the inventive concept.” It is not enough that someone contributed to the claims, because they may include non-patentable integers derived from prior art: see Henry Brothers (Magherafelt) Ltd v Ministry of Defence [1997] RPC 693, 706; [1999] RPC 442. As Laddie J said in the University of Southampton case, the “contribution must be to the formulation of the inventive concept”. Deciding upon inventorship will therefore involve assessing the evidence adduced by the parties as to the nature of the inventive concept and who contributed to it. In some cases this may be quite complex because the inventive concept is a relationship of discontinuity between the claimed invention and the rior art. Inventors themselves will often not know exactly where it lies.

Marcus Smith J then noted that he had not been cited any authority which explained why inventors were confined to natural persons only. His Lordship said at (a):

There is no authority to which I was referred or which I have myself been able to find which explains why the inventor is limited to natural persons only, as opposed to including also legal persons. Whilst one can see the need to limit Class (a) and so the term “inventor” to someone having personality, the exclusion of legal persons from the definition seems less clear-cut. The 1977 Act could, after all, have explicitly referred to “natural persons” rather than just the “inventor”.

Next his Lordship pointed out that DABUS was not, on any view, a person. Then, in contrast to Beach J at [135] – [145], Marcus Smith J considered that the requirement for a valid patent to have an inventive step was decisive:

It seems to me that, when once the notion of an “inventive step” is factored in, the restriction of the term “inventor” to natural person becomes inevitable. An “invention” by definition[29] must involve an “inventive step”, which is something “not obvious to a person skilled in the art”.[30] It is difficult to see how an inventive step can conceived of by a corporation – which must act through agents – without also striking one of those agents. In other words, the inventive step in the mind of a natural person is attributed to the corporation, which only has the inventive step in its “mind” by virtue of such attribution.[31] There is some sense in keeping the definition of inventor close to that which must arise out of the mind of an individual.

Accordingly, DABUS was not an inventor for the purposes of UK law.

Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat)


  1. University of Western Australia v Gray [2009] FCAFC 116; 179 FCR 346 at [248] citing [Polwood Pty Ltd v Foxworth Pty Ltd][polworth] (2008) 165 FCR 527. For the counterparts to s 7(1) of the UK Act see ss 29 and 31.  ?

More on DABUS – this time in Old Blighty Read More »

DABUS “over there”

Judge Brinkema, sitting as a District Court Judge in the Eastern District of Virginia, has upheld the USPTO’s rejection of Thaler’s DABUS applications on the basis that DABUS cannot be an inventor under the US Act.

In the United States, Dr Thaler has two patent applications – US Application Serial Nos 16/524,350 and 16/534,532. In both, DABUS was the nominated inventor and Dr Thaler claims entitlement on the basis of assignment.

As you will no doubt recall, DABUS is a “creativity machine” or artificial intelligence.

To highlight the ludicrousnessfictional nature of the universe we are operating in, Dr Thaler as the owner of DABUS executed the assignment to himself:

In view of the fact that the sole inventor is a Creativity Machine, with no legal personality or capability to execute said agreement, and in view of the fact that the assignee is the owner of said Creativity Machine, this Assignment is considered enforceable without an explicit execution by the inventor. Rather, the owner of DABUS, the Creativity Machine, is signing this Assignment on its behalf.

When the America Invents Act was passed, amongst other things it inserted a definition of “inventor” into the Act so that 35 USC §100(f) provides:

(f) The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

Perhaps (with respect) unsurprisingly, Judge Brinkema ruled that “individual” meant a natural person.

In doing so, her Honour was fortified by the natural or ordinary meaning of the word. Contextually, there were also other references in the Act where Congress had used the term “individual” in reference to the inventor. (For example, §115(a)(1) and (b)(2).)

In addition, the Supreme Court had construed the term “individual” in the Torture Victim Protection Act as referring to a “natural person”. And several Federal Circuit decisions had declared that “inventors must be natural persons” albeit not in the context of the meaning of §100(f).

Judge Brinkema then explained that Dr Thaler “having neither facts nor law to support his argument” contends that policy considerations and the general purpose of the Constitution’s Patent Clause required the statute to be interpreted to permit AIs to be inventors:

Allowing patents for AI-Generated Inventions will result in more innovation. It will incentivize the development of AI capable of producing patentable output by making that output more valuable …. Patents also incentivize commercialization and disclosure of information, and this incentive applies with equal force to a human and an AI-Generated Invention. By contrast, denying patent protection for AI-Generated Inventions threatens to undermine the patent system by failing to encourage the production of socially valuable inventions.

Patent law also protects the moral rights of human inventors and listing an AI as an inventor where appropriate would protect these human rights …. [I]t will discourage individuals from listing themselves as inventors without having contributed to an invention’s conception merely because their name is needed to obtain a patent. Allowing a person to be listed as an inventor for an AI-Generated Invention would not be unfair to an AI, which has no interest in being acknowledged, but allowing people to take credit for work they have not done would devalue human inventorship.

Judge Brinkema considered that binding rulings of the Supreme Court and the Federal Circuit repeatedly held that policy arguments could not override a statute’s plain language. Her Honour also pointed out that, when Congress passed the America Invents Act, AIs were in existence and it was aware of them. Moreover, the USPTO’s own consultations had not exposed any strong support for AIs to be inventors.

Ruling against Thaler, Judge Brinkema concluded:

As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship. But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.

What does this mean for Australia?

Plainly, the American context is not directly applicable to Australia since, as Beach J pointed out at [118], our Act does not have a definition of “inventor”. So, there is much greater scope for policy arguments to operate.

In that connection, the USPTO report cited by Judge Brinkema can be found here.

Ordinarily, I would be on the side of progress: the NRDC view of the world rather than D’Arcy v Myriad. Our courts, of course, must fit within the D’Arcy v Myriad world view unless Parliament were to bestir itself.

Apart from South Africa (which I understand does not undertake substantive examination of patent applications), Dr Thaler’s applications have been rejected on the ground that an AI is not an inventor by the UKIPO and EPO as well as in the USA. Government policy, which appears to have aligned with the Productivity Commission‘s argument that Australia as an intellectual property importing nation should not be out of step with the international environment, would suggest that an AI should not qualify as an inventor. Can we really afford to keep repeating the mistake made in the 3M case? However, an appeal is pending in the EPO. Maybe there will be an appeal in the USA too but the Federal Circuit’s prior indications do not augur well for the success of that.

It is also difficult to comprehend why, if as our Courts have ruled, that authors for copyright purposes must be humans, the same does not apply to inventors. Of course, our law now explicitly recognises moral rights as part of an author’s rights and there is no corresponding provision under Australian patent law. But both types of rights are justified by the same rationales – natural law or Lockean theory of property and, even, the so-called utilitarian theory.

I guess we shall see.

Thaler v Hirshfield ED VA, 2 September 2021 1:20-cv-903 (LMB/TCB)

Lid dip, Prof. Dennis Crouch at Patently-O.

DABUS “over there” Read More »

DABUS Down Under take 3

Following last month’s ruling in Thaler that an AI could be an inventor for the purposes of Australian patent law, the Commissioner of Patents has announced her intention to appeal the decision to the Full Court.

Pursuant to s 158(2), the Commissioner requires leave to appeal. Bearing in mind that Beach J’s decision is the first substantive consideration anywhere in the world to accept that an AI could be an inventor for the purposes of the Patents Act, however, that should not prove too much of an obstacle in this case.

Thaler v Commissioner of Patents [2021] FCA 879

DABUS Down Under take 3 Read More »

Thaler: the robots have arrived DownUnder

In what may well be a world first,[1] Beach J has upheld Thaler’s appeal from the Commissioner, ruling that an AI can be an inventor (or at least that someone who derives title to the invention from an AI can be an entitled person).

Stephen L. Thaler applied for a patent, AU 2019363177, entitled “Food container and devices and methods for attracting enhanced attention”.[2] The application named the inventor as:

DABUS, The invention was autonomously generated by an artificial intelligence

The application was made through the PCT so, as a result, reg. 3.2C(2)(aa) required the applicant to provide the name of the inventor. The Commissioner had used the identification provided to reject the application on the basis that an “inventor” must be a natural person, which an AI obviously was not.

Beach J rejected this approach. At [10], his Honour summarised his conclusions:

in my view an artificial intelligence system can be an inventor for the purposes of the Act. First, an inventor is an agent noun; an agent can be a person or thing that invents. Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor. Third, nothing in the Act dictates the contrary conclusion.

There are a number of strands to his Honour’s reasoning. Perhaps, the most striking feature of his Honour’s reasoning is his Honour’s emphasis the role of patents in encouraging technological development and the importance of not impeding progress by shutting out new developments.

DABUS

Dr Thaler was the owner of the copyright in DABUS’ source code. He was also responsible for and the operator of the computer on which DABUS operated. He did not, however, produce the claimed invention.

As the description of the “inventor” indicates, the claimed invention was an output from the operation of DABUS.

Beach J did not propose to offer a definition of “artificial intelligence”. His Honour considered that DABUS, at least as described in Dr Thaler’s evidence, was not just a “brute force computational tool”. Instead, it was appropriate to describe DABUS as semi-autonomous.[3]

DABUS itself consisted of multiple neural networks. At first, the connections between these networks was trained with human assistance by presentation of fundamental concepts. As the system accumulated knowledge, the networks connected themselves into increasingly longer chains. And then DABUS became capable of generating notions itself – the unsupervised (by humans) generative learning phase. Once in this phase, DABUS was capable of randomn generation of concepts and identifying those which were novel. In addition, it was trained or programmed to identify significant concepts which continued operation further reinforced. At [41], Beach J summarised:

The upshot of all of this, which I accept for present purposes, is that DABUS could be described as self-organising as a cumulative result of algorithms collaboratively generating complexity. DABUS generates novel patterns of information rather than simply associating patterns. Further, it is capable of adapting to new scenarios without additional human input. Further, the artificial intelligence’s software is self-assembling. So, it is not just a human generated software program that then generates a spectrum of possible solutions to a problem combined with a filtering algorithm to optimise the outcome.

Beach J accepted at [42] Dr Thaler’s evidence that:

DABUS, and its underlying neural paradigm, represents a paradigm shift in machine learning since it is based upon the transient chaining topologies formed among associative memories, rather than activation patterns of individual neurons appearing within static architectures ….

Beach J’s reasons

At [118], Beach J pointed out that no specific provision in the Act precluded an artificial intelligence from being an “inventor”.

Secondly, Beach J considered that patent law is different to copyright law which specifically requires human authors and recognition of moral rights.

Thirdly, as it was not defined in the Act, the term “inventor” should be given its ordinary meaning. Dictionary definitions did not help with this as more was required “than mere resort to old millennium usages of that world.”[4] Instead, at [120]:

the word “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. “Computer”, “controller”, “regulator”, “distributor”, “collector”, “lawnmower” and “dishwasher” are all agent nouns. As each example demonstrates, the agent can be a person or a thing. Accordingly, if an artificial intelligence system is the agent which invents, it can be described as an “inventor”.

Importantly, Beach J took into account the purpose of the patents system. At [121], his Honour explained:

in considering the scheme of the Act, it has been said that a widening conception of “manner of manufacture” is a necessary feature of the development of patent law in the twentieth and twenty-first centuries as scientific discoveries inspire new technologies”.[5]

Accordingly, it made little sense to apply a flexible conception of subject matter – “manner of (new) manufacture under s 18(1)(a) – but a restrictive interpretation of ”inventor“. This would mean an otherwise patentable invention could not be patented because there was no ”inventor”.

Beach J’s purposive approach was reinforced by reference to the newly enacted objects clause:

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.

It was not necessary to identify an ambiguity before resorting to the objects clause. The objects clause should always be considered when construing legislation.

It was consistent with the object of the Act to interpret “inventor” in a way which promoted technological innovation. Allowing “computer inventorship” would incentivise computer scientists to develop creative machines. Moreover, the object of the Act would not be advanced if the owners of creative computers resorted to trade secret protection instead of the patent system.

At least, with respect, his Honour’s approach shows that s 2A can operate in favour of technological development by encouraging patenting rather than, as many feared, a cat’s paw justifying resort to an ex post analysis[6] in favour of ‘user rights’.

In a further bold development, Beach J considered ([135] – [145]) that the Act is “really concerned” with inventive step. Under s 7(2), the issue was whether or not the patent claimed a sufficient technological advance over what had gone before to warrant the grant of a monopoly. How that advance was made was not relevant.

Descending to the detail of s 15, Beach J first pointed out at [157] that s 15 is directed to who may be granted a patent and does not define who is an inventor. Beach J accepted that DABUS was not a person and so under s15 could not be a person entitled to the grant of a patent. Even though s 15(1)(a) identified “a person who is the inventor” as the first person entitled to the patent, this was not determinative. It was directed to a different issue than definition of “an inventor”.

Although DABUS could not be an entitled person, Beach J found that Dr Thaler qualified as an entitled person at least on the basis of s 15(1)(b). At [167], his Honour explained:

Dr Thaler is the owner, programmer and operator of DABUS, the artificial intelligence system that made the invention; in that sense the invention was made for him. On established principles of property law, he is the owner of the invention. In that respect, the ownership of the work of the artificial intelligence system is analogous to ownership of the progeny of animals or the treatment of fruit or crops produced by the labour and expense of the occupier of the land (fructus industrialis), which are treated as chattels with separate existence to the land.

By this means, his Honour neatly side-stepped philosophical questions, some of which he had adverted to earlier. For example, at [131] Beach J asked:

If the output of an artificial intelligence system is said to be the invention, who is the inventor? And if a human is required, who? The programmer? The owner? The operator? The trainer? The person who provided input data? All of the above? None of the above? ….

Beach J returned to this aspect of the problem at [194]:

more generally there are various possibilities for patent ownership of the output of an artificial intelligence system. First, one might have the software programmer or developer of the artificial intelligence system, who no doubt may directly or via an employer own copyright in the program in any event. Second, one might have the person who selected and provided the input data or training data for and trained the artificial intelligence system. Indeed, the person who provided the input data may be different from the trainer. Third, one might have the owner of the artificial intelligence system who invested, and potentially may have lost, their capital to produce the output. Fourth, one might have the operator of the artificial intelligence system. But in the present case it would seem that Dr Thaler is the owner.

As Dr Thaler combined in the one person the roles of owner, programmer and operator, he was entitled to the fruits of its operation. Would different problems arise if, instead of being embodied in the one person, each of the functions identified lay in a different person?

Returning to [131], Beach J continued immediately following the extract quoted above, saying:

…. In my view, in some cases it may be none of the above. In some cases, the better analysis, which is consistent with the s 2A object, is to say that the system itself is the inventor. That would reflect the reality. And you would avoid otherwise uncertainty. And indeed that may be the case if the unit embodying the artificial intelligence has its own autonomy. What if it is free to trawl the internet to obtain its own input or training data? What about a robot operating independently in a public space, having its own senses, learning from the environment, and making its own decisions? ….

If one can start with the AI as the inventor, that arguably simplifies the analysis in terms of entitlement as the person claiming to be the entitled person will need to show some claim over the results of the operation of the machine.

One final point. It is not clear from the reasons the extent to which Beach J was referred to the controversies around the world arising from Dr Thaler’s applications. It didn’t matter.

At [220], his Honour pointed out that they were irrelevant to the task before him: the interpretation of the words of the Australian Act.

I am not at all sure that “the world” has reached a settled position about the question whether AIs can be inventors. One would hope, however, Australian law does not head down yet another path where “we” are granting patents for things which are not patentable in their ‘home’ countries. It will, for example, be another 12 years or so before we are finally in something like parity on inventive step with the “rest” of the world and have escaped the constraints of the pre-Raising the Bar tests of inventive step.

Two questions

This short summary cannot do justice to the detailed arguments developed over 228 paragraphs.

As discussed above, Beach J accepted that DABUS could not be granted a patent as it was not a person and s 15 specifies that the grantee of a patent must be a person. The Commissioner had proceeded on the basis that the terms of s 15 were predicated on the “old millennium” understanding that title to an invention flowed from the person who was the inventor just as subsistence and ownership of copyright flows from the person who is the author of the work. Beach J has sidestepped that on the basis that s 15 is concerned only with entitlement, not definition of who is an inventor. Nonetheless, one might think s 15 was drafted in this way on the basis that entitledment flowed from the inventor. It does also seem somewhat curious that an AI can be an inventor but not entitled to a patent because it is not a person.

Secondly, much of the controversy overseas has been about whether Dr Thaler’s creation acts autonomously or semi-autonomously or is just an exercise in brute computing. See for example Rose Hughes’ report on IPKat. Beach J appears to have had some evidence from Dr Thaler about how DABUS was designed and worked. Thus at [43], his Honour accepted Dr Thaler’s “assertion” that:

DABUS, and its underlying neural paradigm, represents a paradigm shift in machine learning since it is based upon the transient chaining topologies formed among associative memories, rather than activation patterns of individual neurons appearing within static architectures. From an engineering perspective, the use of network resonances to drive the formation of chaining topologies, spares programmers the ordeal of matching the output nodes of one [artificial neural network] with the input nodes of others, as in deep learning schemes. In effect, complex neural architectures autonomously wire themselves together using only scalar resonances.

Reinforcement or weakening of such chains takes place when they appropriate special hot button nets containing memories of salient consequences. Therefore, instead of following error gradients, as in traditional artificial neural net training, conceptual chains are reinforced in proportion to the numbers and significances of advantages offered. Classification is not in terms of human defined categories, but via the consequence chains branching organically from any given concept, effectively providing functional definitions of it. Ideas form as islands of neural modules aggregate through simple learning rules, the semantic portions thereof, being human readable as pidgin language.

Later his Honour asked at [127] – [128]:

Who sets the goal for the system? The human programmer or operator? Or does the system set and define its own goal? Let the latter be assumed. Further, even if the human programmer or operator sets the goal, does the system have free choice in choosing between various options and pathways in order to achieve the goal? Let that freedom also be assumed. Further, who provides or selects the input data? Let it be assumed that the system can trawl for and select its own data. Further, the larger the choice for the system in terms of the algorithms and iterations developed for the artificial neural networks and their interaction, the more autonomous the system. Let it be assumed that one is dealing with a choice of the type that DABUS has in the sense that I have previously described.

Making all of these assumptions, can it seriously be said that the system is just a brute force computational tool? Can it seriously be said that the system just manifests automation rather than autonomy? ….

If by “assumptions” his Honour is referring to the evidence from Dr Thaler at [42] and [43] which his Honour accepted, that is one thing. It may be quite another thing if they were in fact assumptions.

Where to now?

At the time of writing, the Commissioner is understood to be considering whether or not to appeal.

Thaler v Commissioner of Patents [2021] FCA 879


  1. The EPO refused the corresponding patent application with the oral hearing of the appeal to be heard on 21 December 2021. Apparently, the corresponding patent has been granted in South Africa which, I am given to understand, effectively does not operate a substantive examination system.  ?
  2. For an interesting discussion, see “The first AI inventor – IPKat searches for the facts behind the hype” and the later report on the USPTO’s consultations “Is it time to move on from the AI inventor debate? ?
  3. At [19] – [29], Beach J provides an overview of how his Honour understands artificial neural networks work.  ?
  4. At [15]. For the lawyers, [148] – [154] set out the technical arguments for the limitations of dictionaries in some detail.  ?
  5. Diplomatically (and consistently with precedent) citing D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at [18] perhaps the single biggest retreat from the teleological approach declared in NRDC.  ?
  6. For example, Mark A Lemley, ‘Ex Ante versus Ex Post Justifications for Intellectual Property ?

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