Search Results for: thaler

UKSC rejects Thaler and DABUS

The United Kingdom Supreme Court has ruled that DABUS is not an inventor for the purposes of UK patent law and so Dr Thaler’s applications for a patent claimed to be invented by DABUS have failed.

You will recall that Dr Thaler has applied in the UK (and many other parts of the world) for the grant of patents in his name for inventions said to have been generated by a machine acting autonomously and powered by the artificial intelligence, DABUS.

Section 7 of the UK Patents Act 1977 provides in part:

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.

Further, section 13 reinforced the centrality of the position of “the inventor” in the scheme of the Act.

Lord Kitchin pointed out that s 7(2) read with s 7(3) provides an exhaustive code for determining who is entitled to a patent. And, just like s 15(1) of the Patents Act, that is the inventor or someone claiming through the inventor.

Unlike the Australian Act, section 7 of the UK Act also includes s 7(4) which defines the inventor as “the actual deviser of the invention”.

Unlike the approach taken by the Australian High Court, Lord Kitchin (with whom Lords Hodge, Hamblen, Leggatt and Richards agreed) considered it was entirely proper for the Comptroller-General to take Dr Thaler’s statements at face value.

Accordingly, at [56], Lord Kitchin ruled that an inventor for the purposes of the Patents Act 1977 must be a natural person and, as DABUS was not a person, it was not the inventor.

In my judgment, the position taken by the Comptroller on this issue is entirely correct. The structure and content of sections 7 and 13 of the Act, on their own and in the context of the Act as a whole, permit only one interpretation: an inventor within the meaning of the 1977 Act must be a natural person, and DABUS is not a person at all, let alone a natural person: it is a machine and on the factual assumption underpinning these proceedings, created or generated the technical advances disclosed in the applications on its own. Here I use the term “technical advance” rather than “invention”, and the terms “create” or “generate” rather than “devise” or “invent” deliberately to avoid prejudging the first issue we have to decide. But it is indisputable that DABUS is a machine, not a person (whether natural or legal), and I do not understand Dr Thaler to suggest otherwise.

As in the Australian cases, Dr Thaler advanced an alternative claim based on the “doctrine of accession”. Thus, Dr Thaler claimed he was entitled to the patent as the owner of DABUS and so entitled to any fruits of its production.

At [83], Lord Kitchin explained Dr Thaler’s contention based “purely” on ownership of the machine:

The DABUS inventions are, he says, the fruits of (in the sense they were produced by) the DABUS machine that he owns and further, that DABUS was designed to make inventions and so these fruits were by no means unexpected. He also contends that he was and remains the first person to possess the inventions and this provides a proper basis for their ownership. In short, he contends that he derived title by operation of a rule of law (the doctrine of accession) that satisfied the terms of section 7(2)(b) of the Act and conferred on him the right to apply for and secure the grant of patent protection for any inventions made by DABUS.

This contention failed. First, as DABUS was not an inventor, at [84] it gave rise to no rights which could be claimed. That was sufficient for the application to fail.

Secondly, in any event, Dr Thaler’s invocation of the doctrine of accession was entirely misplaced. The doctrine of accession applied to new tangible property (e.g. a calf) produced by an existing tangible property (e.g. a cow), not intangible property such as inventions. At [88] – [89], Lord Kitchin explained:

We are not concerned here with a new item of tangible property produced by an existing item of tangible property, however. We are concerned with what appear (and which for present purposes we must assume) to be concepts for new and non-obvious devices and methods, and descriptions of ways to put them to into practice, all of which, so Dr Thaler maintains, have been generated autonomously by DABUS. There is no principled basis for applying the doctrine of accession in these circumstances.


For these reasons and those given by the Court of Appeal, I am satisfied that the doctrine upon which Dr Thaler relies here, that of accession, does not, as a matter of law, operate to confer on him the property in or the right to apply for and obtain a patent for any technical development made by DABUS.

As the Comptroller-General was entitled to take Dr Thaler’s claims at face value, the Comptroller-General was entitled to reject the applications as they were obviously defective: they did not identify anyone who could be the inventor or any basis on which Dr Thaler could claim to derive title from an inventor.

It should be noted that Lord Kitchin was at pains to point out that the Court was concerned with a narrow question: the meaning of section 7 and associated provisions in the UK Act. It was not concerned, he considered with broader, policy questions. His Lordship explained at [48] – [50]:

The Comptroller has emphasised, correctly in my view, that this appeal is not concerned with the broader question whether technical advances generated by machines acting autonomously and powered by AI should be patentable. Nor is it concerned with the question whether the meaning of the term “inventor” ought to be expanded, so far as necessary, to include machines powered by AI which generate new and non-obvious products and processes which may be thought to offer benefits over products and processes which are already known.


These questions raise policy issues about the purpose of a patent system, the need to incentivise technical innovation and the provision of an appropriate monopoly in return for the making available to the public of new and non-obvious technical advances, and an explanation of how to put them into practice across the range of the monopoly sought. It may be thought that the rapid advances in AI technology in recent times render these questions even more important than they were when these applications were made.


This appeal is concerned instead with the much more focused question of the correct interpretation and application of the relevant provisions of the 1977 Act to the applications made by Dr Thaler. This was the approach taken by the Comptroller, the High Court and the Court of Appeal, and rightly so.

Dr Thaler having failed to identify an inventor through whom he could claim entitlement, the Comptroller-General had been right to deem the applications withdrawn.

Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 December 2023)

UKSC rejects Thaler and DABUS Read More »

Thaler (DABUS) is donged Down Under

Last Friday, the clock finally ran out on Dr Thaler’s attempt to register a patent in Australia on the basis that the artificial intelligence, DABUS, was the inventor: the High Court refused special leave to appeal from the Full Federal Court’s ruling that an inventor must be a human being.

Perhaps surprisingly, the High Court did not reject the application for special leave on the grounds that an inventor for the purposes of the Patents Act must be a human being. Rather, it dismissed the application on the grounds that it is not an appropriate vehicle for the determination of the issue.

You will recall that s 15(1) of the Patents Act 1990 defines who is entitled to be granted a patent:

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 the 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).

The Commissioner had rejected Dr Thaler’s application at the formalities stage on the basis that an inventor must be a human being. Therefore, Dr Thaler’s application failed at the formalities stage under reg. 3.2C(2)(ii) because the application identified DABUS as the inventor and DABUS was an artificial intelligence only.

It was an agreed fact before the Courts that DABUS was the “inventor”:

MR SHAVIN: …. [Dr Thaler] programmed the computer but he said that the way in which the computer was programmed is it acted independently in its selection of subject matter and in its generation of the invention. So, he says that he truly was not the inventor, but DABUS, the artificial intelligence, he says was the proper inventor.

Two or perhaps three matters seemed to be exercising the panel determining the special leave application.

First, there were questions directed to whether or not the case was simply one of either DABUS qualified as an inventor or there was no inventor at all for the purposes of the Act. One problem with that was that, as it was an agreed fact between the Commissioner and Dr Thaler there was no contradictor to the proposition. Notwithstanding the agreement between the parties, the panel appeared to consider that Dr Thaler himself might have been the inventor:

EDELMAN J: Mr Shavin, your submission would have a great deal of force if it were possible to exclude, immediately, without any possibility of argument, the possibility that the applicant was not the inventor, because then, once that possibility is excluded, one is left with either a presumption of the section that every invention must have an inventor – on your submission – that is wrong. Or, alternatively, an approach an inventor does not need to be a natural person, which meets some of the difficulties that the Full Court has identified. But the difficulty for this Court is that without having any submissions about the starting point, which is whether a natural person here could be the inventor, we are groping in the dark.

The idea being suggested here appears to be similar to questions of authorship in copyright law where there may be questions of degree such that the computer program is merely a tool like, say, Microsoft Word which an author uses to record his or her words compared to the computerised system used to generate telephone directories in the Phone Directories case where, the system having been designed and implemented, the Court found there was no human intervention.[1]

Secondly, if the Act did set up the dichotomy and an inventor had to be a human being, concerns were expressed that would mean there was a “gap” in the legislation – there could be “inventions” that could not be protected because there was no inventor. Thus:

EDELMAN J: If that factual and legal position is correct, and Dr Thaler is not the inventor, then there is a significant hole in the operation of section 15 because it means that you can have an invention but no inventor.

Thirdly, the panel was plainly aware that the status of DABUS as an inventor was an issue being litigated around the world and, in particular, the UK Supreme Court has listed for hearing on 27 February 2023 the legality of the procedural approach taken to reject Dr Thaler’s application.

Where does that leave matters?

Plainly, some sort of question mark hangs over the Full Federal Court’s approach.

So far, the Commissioner has not announced any change to practice about disallowing applications which identify an artificial intelligence as an inventor.

There may be a question whether someone who does not have Dr Thaler’s agenda will nominate an artificial intelligence as an inventor. The panel refusing the special leave application appeared to envisage that the person who owned, or controlled or programmed the computer might legally be able to claim inventorship. For example:

EDELMAN J: There is an easy way the question could have been raised, which could have been if the applicant had listed himself as the inventor and the Commissioner and had rejected that on the basis that he was not the inventor but the artificial intelligence was the inventor, which would then have given rise to the prospect that nobody, for the purposes of section 15, was the inventor.

There are, however, with respect any number of difficulties with this.

For example, as Mr Shavin KC pointed out, that might require the applicant to identify someone as the inventor which the applicant did not believe to be true.

Secondly, with the benefit of the special leave panel’s (non-binding) observations, does one nominate the owner, the controller or the programmer or some combination of all three as the inventor? If one nominated the wrong person, that might provide a ground for revoking any subsequent patent on the grounds of lack of entitlement or more likely fraud, false suggestion or misrepresentation.[2]

Thirdly, how would anyone ever know? In most (if not all) cases, the Commissioner is not going to be in a position to dispute the nomination of a person as an inventor. It might possibly come up in the context of an opposition or infringement / revocation proceedings but that would likely depend on something like the time-honoured tradition of a disgruntled ex-employee blowing the whistle.

If nothing else, if such things are to be protected as patents, it seems what we really need is some form of international agreement one whether they should be patentable and, if so, rules or guidelines for determining who is entitled to be the applicant. There has of course been no rush of international adoption of the extension of copyright to computer generated works. That problem, however, is becoming increasingly important as schoolkids (and millions of others) are happily playing with online AIs to generate their own art works, poems and other materials.

Thaler v Commissioner of Patents [2022] HCATrans 199 (11 November 2022)


  1. Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149 at e.g. [118] – [120]. The trial judge, whose decision was upheld in that appeal, was also a member of the panel which refused special leave in Thaler.  ?
  2. Patents Act s 138(3)(a) and (e) – although, in the case of entitlement issues s 138(4) and s 22A may very well excuse inadvertent errors.  ?

Thaler (DABUS) is donged Down Under 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 ?

Thaler: the robots have arrived DownUnder Read More »

New Copyright and AI reference group

The Commonwealth Attorney-General, Mark Dreyfus, yesterday announced that the Government will form a Copyright and Artificial Intelligence reference group “to better prepare for future copyright challenges emerging from AI.”

The Attorney-General and his department have held a number of roundtables during the course of the year to consult about a range of issues. One of the issues discussed included the issues arising from the use of AI tools.

According to the Media Release:

AI gives rise to a number of important copyright issues, including the material used to train AI models, transparency of inputs and outputs, the use of AI to create imitative works, and whether and when AI-generated works should receive copyright protection.

The reference group will be a standing mechanism for ongoing engagement with stakeholders across a wide range of sectors, including the creative, media and technology sectors, to consider issues in a careful and consultative way.

Engagement with a broad range of stakeholders and sectors will help Australia harness AI opportunities, while continuing to support the vitality of our creative sector.

The Media Release notes that the reference group will complement “other AI-related Government initiatives, including the work being led by the Minister for Industry and Science Ed Husic on the safe and responsible use of AI.”

The Media Release notes that further details, in addition to outcomes from the Roundtables, will be made available through the Attorney-General’s Department’s website in due course.

Some very quick thoughts

One would hope the complementing of other agencies’ work may involve some fairly close co-operation on some issues at least since the question of authorship for copyright seems to raise similar issues to who is the designer for the purposes of registered design or the inventor for patents – all three being predicated on the assumption of human agency.

It seems pretty clear under our law following Telstra v PDC ([118] – [119] and [169]) that works generated by one or two simple “prompts” will not qualify for copyright protection as original works in Australia. The situation where the material results from much more detailed instructions is much more up in the air – both here and overseas.

In the USA, the Register of Copyright’s Review Board has rejected the claim to copyright in a work resulting from 624 prompts and further ‘adjustments’ by the human ‘operator’ / claimant, Mr Allen:

There is increasing commentary likening the generation of materials through detailed prompts to the basis on which copyright is recognised as subsisting in photographs. According to the Review Board, however, Mr Allen’s arguments based on the inputting of detailed prompts did not establish authorship:

As the Office has explained, “Midjourney does not interpret prompts as specific instructions to create a particular expressive result,” because “Midjourney does not understand grammar, sentence structure, or words like humans.” It is the Office’s understanding that, because Midjourney does not treat text prompts as direct instructions, users may need to attempt hundreds of iterations before landing upon an image they find satisfactory. This appears to be the case for Mr. Allen, who experimented with over 600 prompts before he “select[ed] and crop[ped] out one ‘acceptable’ panel out of four potential images … (after hundreds were previously generated).” As the Office described in its March guidance, “when an AI technology receives solely a prompt from a human and produces complex written, visual, or musical works in response, the ‘traditional elements of authorship’ are determined and executed by the technology—not the human user.” And because the authorship in the Midjourney Image is more than de minimis, Mr. Allen must exclude it from his claim. Because Mr. Allen has refused to limit his claim to exclude its non-human authorship elements, the Office cannot register the Work as submitted. (Footnotes and citations omitted)

Whether the US courts or, for that matter, an Australian court will follow that approach remains to be seen. Judge Howell, in rejecting Dr Thaler’s attempt to register copyright in “A Recent Entrance to Paradise” on purely administrative review grounds, outlined the argument in obiter:

A camera may generate only a “mechanical reproduction” of a scene, but does so only after the photographer develops a “mental conception” of the photograph, which is given its final form by that photographer’s decisions like “posing the [subject] in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation” crafting the overall image. Human involvement in, and ultimate creative control over, the work at issue was key to the conclusion that the new type of work fell within the bounds of copyright.

The position on the treatment of inputs is also up in the air. The Authors’ Guild of America and others have brought a number of cases against various AI operators including Open AI and LLaMA on the basis that the training of these LLMs involved the wholesale copying of the authors’ works into the LLM’s databases.

A number of commentators argue these cases are likely to fail, however, in light of the Second Circuit’s ruling that the Google Books Project, in which Google scanned thousands of in-copyright books to create a searchable digital database, did not infringe copyright as a “fair use”.

Arguably, however, the nature and purpose of the uses are different and it will be interesting to see if the US Supreme Court’s decision in Andy Warhol Foundation v Goldsmith with its emphasis on the balancing nature of the inquiry will lead to a different outcome.

On the other hand, if the conduct is found to be a non-infringing use in the USA, Australian law does not have a corresponding, broadly based “fair use” defence. Can one argue that the AI is engaged in “research or study”? If not, what will the policy ramifications be for Australia? Will anyone develop AIs in Australia if training an AI in Australia does infringe copyright while it is not an infringement in, say, the United States? If it’s open slather, though, how will authors and publishers get paid?

Then, there’s the question of infringement. It seems it is possible in at least some cases to find out what an LLM has been trained on – but how long that will remain the case must be a question. Then, ordinarily, a copyright owner under our law would approach this by demonstrating a close degree of resemblance to a copyright work and the potential for access. Then, a court is likely to see if the alleged infringer can explain how it developed the material independently (or there is some other defence).

We do have judicial statements that there is no infringement in copying the style or the ideas. The successful cases of emulating the style are pretty rare but I guess the point of asking an AI to produce something in the style of … is that the AI is going to produce something new rather than merely copied. Ultimately, that is going to depend on comparing what is produced to one (or much less likely, more) copyright works.

Apart from the uncertainties about how our law will deal with these issues, it seems clear that careful consideration of how things are developing overseas is required and, in Dr Pangloss’ world, development of uniform approaches.

New Copyright and AI reference group Read More »

Copyright and another AI

Judge Howell in the District Court for the District of Columbia (USA) has rejected Dr Thaler’s attempt to register copyright in “A Recent Entrance to Paradise”.

Dr Thaler – well-known for his attempt to obtain patent protection for some kind of “fractal” bottle “invented” by DABUS – attempted to register[1] a copyright in the United States for “A Recent Entrance to Paradise”:

In his application to the Register of Copyrights, Dr Thaler stated the work had been “autonomously created by a computer algorithm running on a machine” – an AI which Dr Thaler named “Creativity Machine” – and nominated himself as the owner of the copyright in the computer-generated work “as a work-for-hire the owner of the Creativity Machine.”

The Register of Copyrights rejected the application on the basis that copyright law requires a human author and the “Creativity Machine” was not human.

Dr Thaler applied for administrative law review. Judge Howell affirmed the Register’s ruling.

Judge Howell followed a number of earlier decisions which required a human author. Her Honour noted (e.g. slip op. 10):

The act of human creation—and how to best encourage human individuals to engage in that creation, and thereby promote science and the useful arts—was thus central to American copyright from its very inception. Non-human actors need no incentivization with the promise of exclusive rights under United States law, and copyright was therefore not designed to reach them.[2](emphasis supplied)

Judge Howell’s ruling, however, is very narrow.

The fact that the case was an administrative law review is significant. As the case was an administrative law review, the only question was whether the Register acted arbitrarily, capriciously or otherwise in violation of the Administrative Procedure Act on the basis of the administrative record before the Register.

On that basis, the case failed.

In the course of the proceeding before Judge Howell, Dr Thaler attempted to introduce new facts (which may seem familiar to those of you following the patent debate). Dr Thaler devoted a “substantial portion” of his submissions to various theories about how ownership of any copyright transferred to him by operation of the “work made for hire” or common law property principles. (Slip op. footnote 1):

[Dr Thaler] elaborates on his development, use, ownership, and prompting of the AI generating software in the so-called “Creativity Machine,” implying a level of human involvement in this case entirely absent in the administrative record. ….

These additional facts were irrelevant on the administrative law review presented (Slip op. 14):

Plaintiff’s effort to update and modify the facts for judicial review on an APA claim is too late. On the record designed by plaintiff from the outset of his application for copyright registration, this case presents only the question of whether a work generated autonomously by a computer system is eligible for copyright. In the absence of any human involvement in the creation of the work, the clear and straightforward answer is the one given by the Register: No.

If Dr Thaler’s submissions about his development, use, ownership and prompting of “Creativity Machine” had been relevant, it might possibly lead to a different conclusion.

As noted above, Judge Howell did opine that non-human actors do not need the incentivization of exclusive rights to generate materials. But Judge Howell also noted that the law had developed to recognise copyright in the “mechanical reproduction” of a scene by a camera because that reproduction resulted from “human involvement in, and ultimate creative control over, the work ….”[3]

Judge Howell noted that a case raising issues such as those Dr Thaler belatedly attempted raise would give rise to complex issues:

Undoubtedly, we are approaching new frontiers in copyright as artists put AI in their toolbox to be used in the generation of new visual and other artistic works. The increased attenuation of human creativity from the actual generation of the final work will prompt challenging questions regarding how much human input is necessary to qualify the user of an AI system as an “author” of a generated work, the scope of the protection obtained over the resultant image, how to assess the originality of AI-generated works where the systems may have been trained on unknown pre-existing works, how copyright might best be used to incentivize creative works involving AI, and more.[4]

All of these considerations seem likely to be relevant under Australian law for the subsistence of copyright in original works.[5]

In her letter rejecting the “Zarya of the Dawn” application, the Register did reject the claim to copyright made on the basis of the sort of facts Dr Thaler wished to raise.

I guess we can expect Dr Thaler to seek to register some new production by the “Creativity Machine” with a more extensive record.

Stephen Thaler v Shira Perlmutter (DCDC 23 Aug 2023 Case 22–1564)


  1. The USA is one of the very few countries which operate a system to register copyright. Even in the USA, registration is not madatory but, in the case of “US Works”, registration is a requirement before an infringement action can be brought in the USA and also to qualify for statutory damages: 17 USC §411 and §412. 17 USC [§101][101] defines “United States work” to mean: (a) a published work that is first published in the United States; first published simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States; first published simultaneously in the United States and a foreign nation that is not a treaty party; or first published in a foreign nation that is not a treaty party, and all of the authors of the work are nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual work legal entities with headquarters in, the United States; (b) an unpublished work where all the authors of the work are nationals, domiciliaries, or habitual residents of the United States, or in the case of an unpublished audiovisual work, all the authors are legal entities with headquarters in the United States; or (c) a pictorial, graphic, or sculptural work incorporated in a building or structure that is located in the United States. So, if you publish your work first overseas and not simultaneously in the United States and the authors are not US citizens or residents, the obligation to register will not usually apply. See generally Circular 1. ?
  2. Footnote 2 in the Opinion also includes a fun quote from Justin Hughes, Restating Copyright Law’s Originality Requirement, 44 COLUMBIA J. L. & ARTS 383, 408 “this debate is an unnecessary detour since “[t]he day sentient refugees from some intergalactic war arrive on Earth and are granted asylum in Iceland, copyright law will be the least of our problems.”  ?
  3. “A camera may generate only a “mechanical reproduction” of a scene, but does so only after the photographer develops a “mental conception” of the photograph, which is given its final form by that photographer’s decisions like “posing the [subject] in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation” crafting the overall image. Human involvement in, and ultimate creative control over, the work at issue was key to the conclusion that the new type of work fell within the bounds of copyright.” citing Burrow-Giles Lithographic Co. v. Sarony 111 U.S. 53, 59 – 60 (1884).  ?
  4. (Slip op. 13) citing a letter from Senators Tilllis and Coons to the Director of the USPTO and the Register of Copyrights calling for the establishment of a national commission on AI.  ?
  5. See e.g Telstra v PDC at [118] – [119] and [169].  ?

Copyright and another AI Read More »

An AI is not an inventor after all (or yet)

A strong Full Bench of the Federal Court of Australia has ruled that DABUS, an artificial intelligence, is not an inventor for the purposes of patent law. So, Dr Thaler’s application for DABUS’ patent has been rejected.[1] No doubt the robot will be back again[2] and we can expect that an application for special leave will be pending soon.

A dalek on display
By Moritz B. – Self-photographed, CC BY 2.5,

Dr Thaler had applied for a patent, No. 2019363177 entitled “Food container and devices and methods for attracting enhanced attention”, naming DABUS – an acronym for ‘device for the autonomous bootstrapping of unified sentience’ – as the inventor.

The Commissioner had rejected the application under reg. 3.2C for failure to identify the inventor. That rejection was overturned by Beach J on appeal from the Commissioner. And this was the decision on the Commissioner’s appeal.

Essentially, the Full Court ruled that an inventor for the purposes of patent law must be a natural person, not an artificial intelligence.

The Full Court held that identification of the “inventor” was central to the scheme of the Act. This is because, under s 15, only the inventor or someone claiming through the inventor is entitled to a patent.

Under the legislation before the 1990 Act, their Honours considered that an ‘actual inventor’ could be only a person with legal personality. At [98], their Honours summarised:

In each of these provisions, the ability of a person to make an application for a patent was predicated upon the existence of an “actual inventor” from whom the entitlement to the patent was directly or indirectly derived. Paragraphs (a), (c) and (e) describe the actual inventor as, respectively, a person, one that is deceased and has a legal representative (which must be a person), and one that is not resident in Australia. Paragraphs (b), (d), (f) and (fa) all contemplate an assignment happening between the patent applicant and the actual inventor. It is clear from these provisions that only a person with a legal personality could be the “actual inventor” under this legislative scheme.

This scheme, and its consequences, did not materially change under the 1990 Act.

Acknowledging that a none of the case law had to consider whether an AI could be an inventor, the Full Court noted that the ‘entitlement’ cases proceeded on the basis that ‘inventor’ meant the ‘actual inventor’. Their Honours considered the cases interpreting this expression were all premised on the ‘actual inventor’ – the person whose mind devised the claimed invention – being a natural person. At [105] and [106], their Honours explained:

None of the cases cited in the preceding five paragraphs confronted the question that arose before the primary judge of whether or not the “inventor” could include an artificial intelligence machine. We do not take the references in those cases to “person” to mean, definitively, that an inventor under the Patents Act and Regulations must be a human. However, it is plain from these cases that the law relating to the entitlement of a person to the grant of a patent is premised upon an invention for the purposes of the Patents Act arising from the mind of a natural person or persons. Those who contribute to, or supply, the inventive concept are entitled to the grant. The grant of a patent for an invention rewards their ingenuity.

Where s 15(1)(a) provides that a patent for an invention may only be granted to “a person who is an inventor”, the reference to “a person” emphasises, in context, that this is a natural person. …. (emphasis supplied)

Given that conclusion, and the structure of s 15, Dr Thaler’s argument that he was entitled on the basis of ownership of the output of DABUS’ efforts was to no avail. At [113]:

… having regard to the view that we have taken to the construction of s 15(1) and reg 3.2C(2)(aa) [i]t is not to the point that Dr Thaler may have rights to the output of DABUS. Only a natural person can be an inventor for the purposes of the Patents Act and Regulations. Such an inventor must be identified for any person to be entitled to a grant of a patent under ss 15(1)(b)-(d). (emphasis supplied)

The Full Court then drew support from the High Court’s reasoning in D’Arcy v Myriad esp. at [6] in which the majority emphasised that patentable subject matter had to be the product of “human action”.

Although not put in this way, it is apparent that policy considerations played a significant role in their Honours’ conclusion. At [119] to [120], their Honours pointed out:

in filing the application, Dr Thaler no doubt intended to provoke debate as to the role that artificial intelligence may take within the scheme of the Patents Act and Regulations. Such debate is important and worthwhile. However, in the present case it clouded consideration of the prosaic question before the primary judge, which concerned the proper construction of s 15 and reg 3.2C(2)(aa). In our view, there are many propositions that arise for consideration in the context of artificial intelligence and inventions. They include whether, as a matter of policy, a person who is an inventor should be redefined to include an artificial intelligence. If so, to whom should a patent be granted in respect of its output? The options include one or more of: the owner of the machine upon which the artificial intelligence software runs, the developer of the artificial intelligence software, the owner of the copyright in its source code, the person who inputs the data used by the artificial intelligence to develop its output, and no doubt others. If an artificial intelligence is capable of being recognised as an inventor, should the standard of inventive step be recalibrated such that it is no longer judged by reference to the knowledge and thought processes of the hypothetical uninventive skilled worker in the field? If so, how? What continuing role might the ground of revocation for false suggestion or misrepresentation have, in circumstances where the inventor is a machine?

Those questions and many more require consideration. Having regard to the agreed facts in the present case, it would appear that this should be attended to with some urgency. However, the Court must be cautious about approaching the task of statutory construction by reference to what it might regard as desirable policy, imputing that policy to the legislation, and then characterising that as the purpose of the legislation …. (emphasis supplied)

Finally, in this quick reaction, it can be noted that the Full Court recognised that their Honours’ decision was consistent with the English Court of Appeal’s decision on the counterpart application. Their Honours considered, however, there were sufficient differences in the legislative schemes that a wholly autocthonous solution should be essayed.

Commissioner of Patents v Thaler [2022] FCAFC 62 (Allsop CJ, Nicholas, Yates, Moshinsky And Burley JJ)


  1. Patent application No. 2019363177 entitled “Food container and devices and methods for attracting enhanced attention”  ?
  2. With apologies to you know who.  ?

An AI is not an inventor after all (or yet) 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 »

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 »

Scroll to Top