artificial intelligence

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.  ?

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 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

Artificial intelligences and inventions Down Under

The Commissioner of Patents has rejected the DABUS application Down Under.

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

DABUS, The invention was autonomously generated by an artificial intelligence

The application being made under the PCT, there was a formalities check, which, in reg. 3.2C(2)(aa), requires the Commissioner to check whether the named inventor has been identified.[1]

When the Delegate objected that an inventor had not been identified. Thaler explained why he considered DABUS was the inventor (in part):

The sole contributor to the invention is DABUS, an artificial intelligence machine that includes artificial intelligence programs written by the applicant. DABUS is capable of devising inventions without the involvement of a natural person who traditionally qualifies as an inventor. For the present invention, the machine only received training in general knowledge and proceeded to independently conceive of the invention and to identify it as novel and salient. How DABUS functions is described in detail in US Patent 10,423,875 and other patent specifications.

The Delegate understood from this response that DABUS is not a person as understood in law – an individual, a corporation or a body politic.[2]

There is no definition of “inventor” in the Act. Thus, Wilcox and Lindgren JJ had declared that the word bears its ordinary English meaning.[3]

At [12], the Delegate said:

…. Any standard dictionary shows that the traditional meaning of inventor is a person who invents. At the time that the Act came into operation (in 1991) there would have been no doubt that inventors were natural persons, and machines were tools that could be used by inventors. However, it is now well known that machines can do far more than this, and it is reasonable to argue that artificial intelligence machines might be capable of being inventors. I have no evidence whether the ordinary meaning of “inventor”, assessed at the present day, can include a machine. But if this were the ordinary meaning, would this be consistent with the other provisions of the Act?

So far as the other provisions and context provided any (limited) assistance, the Delegate considered at [20] that it was clear a patentee must be a person. This implied that an inventor also needed to be a person and, in any event, an inventor who was not a person could not be a patentee.

Although it was not part of the decision, it may also be noted that an author for the purposes of copyright must be a natural person. A computer-generated work is not an original work for the purposes of copyright as there is no author.[4] Of course, a patent can protect ideas or function while copyright protects the “expression” of ideas. At least to the extent that the rationale for granting protection in either system is the natural rights of a person to the fruits of their mental labour,[4] one would think the same considerations should apply.

Thaler has enlisted the services of Allen’s pro bono and appealed, No. VID 108/2021.

Stephen L. Thaler [2021] APO 5]


  1. Correct identification of the inventor(s) is important as a patent can be revoked if it is not granted to an “entitled person” (or all the “entitled persons” (see s 138(3)(a)) and a person can be an “entitled person” only if they can trace their chain of title back to the inventor(s): s 15(1)(a).  ?
  2. Citing Acts Interpretation Act 1901 (Cth) s 2C.  ?
  3. Atlantis Corporation Pty Ltd v Schindler [1997] FCA 1105; 39 IPR 29 at 54.  ?
  4. Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149 at [90] (Keane CJ) and [117] – [119] (Perram J).  ?