High Court denies special license in AI invention case

The Australian High Court has denied a request for special permission to a patent applicant who had filed an Australian patent application naming an artificial intelligence (AI) system as the inventor.

The High Court’s decision means that the prevailing position in Australia is upheld: that a patent application cannot identify a non-human inventor. That position is consistent with the position in other jurisdictions where corresponding applications have been filed (including the US, UK, EU, New Zealand, Taiwan, Korea, Israel and India), and it is noted that appeals are still pending. pending in some of those jurisdictions

Although this is the end of the line for this particular patent application, the High Court’s comments leave the door open for the High Court to hear the “invention issue” in the future, should a more appropriate case come before it. the court.

The Court seemed concerned with resolving the underlying question of whether the AI ​​system was really the sole inventor and, in the present case, the parties had agreed that the claimant, Dr. Thaler, was not an inventor. The Court’s comments suggest that an appropriate case for determination may involve a natural person claiming to be the inventor and encountering rejection on the grounds that the true inventor is an AI system.

It is worth remembering that this line of decisions focused on the procedural question of whether the application in question, naming a non-human inventor, was validly filed for the purposes of the Law. It says nothing about the merits of the claimed invention, or whether the invention could be awarded on its merits. It also does not prevent the filing of patent applications for inventions that use AI, as long as the applications only include humans as inventors (any such application would, of course, have to meet the usual patentability requirements before a patent would be granted). ) .

Political debate also remains open, and it remains to be seen whether the Australian government will consider amending the Patents Act 1990 (Cth) (Act) or Patent Regulations 1991 (Cth) (Regulation) to recognize non-human inventors.

Background and procedural history

In 2019, Dr. Stephen Thaler filed Australian Patent Application No. 2019363177 for “Food Containers and Devices and Methods for Attracting Increased Attention” (Request). Dr. Thaler named his AI system ‘DABUS’ after the inventor of the app.

how we report herea Delegate of the Patent Commissioner rejected the Application for not meeting the formal requirements established in the Patent Regulations 1991 (Cth), as it was not possible to identify a person who could be granted a patent on the Application.

Dr Thaler appealed that decision to the Federal Court of Australia. how we report here, in a groundbreaking decision that garnered worldwide media attention, a single Federal Court of Australia judge agreed with Dr. Thaler. His Lordship found that ‘inventor’ was not defined in the Law or Regulations, and that there was nothing expressly prohibiting an AI from being listed as an inventor in the Application.

The Commissioner of Patents then appealed the Justice Beach decision to the Full Court of the Federal Court of Australia. how we report here, an expanded bench of five judges overturned the Justice Beach decision. In a unanimous decision, the Full Court held that an ‘inventor’ must be a ‘natural person’, based on the historical centrality of the role of a human inventor in patent applications, the outline of the Law and Regulations, and the natural reading of section 15(1) of the Act.

Dr Thaler applied for special leave to appeal that decision to the Australian High Court, Australia’s highest court and his last chance to have the application considered by an Australian court.

Special permit application

Before the High Court heard the appeal, Dr. Thaler had to convince a smaller number of judges to grant him “special leave” to appeal. Most special license applications are decided ‘on paper’, based on written submissions made by the parties.

In this case, Dr. Thaler’s request was heard in person by three judges: Justices Gordon, Edelman, and Gleeson. During the hearing, Their Honors heard that Dr. Thaler’s case had been brought before the Federal Court (both at first instance and on appeal) by reference to certain facts agreed between Dr. Thaler and the Commissioner of Patents. Those agreed facts included that Dr. Thaler was not the inventor of the alleged invention that is the subject of the Request.

This left the High Court in the position that, if leave were granted, the Court would be limited to considering the narrow question of whether the Commissioner was right to reject the Application, solely because a non-natural person was listed as the inventor. The Court was unable to address the factual issue of whether or not DABUS was the inventor (or even co-inventor) of the Application. Rather, it should have proceeded, as the lower courts had done, on the basis that DABUS was the inventor.

This may well have been weighing on the mind of the Court when, in rejecting the application for special leave, Justice Gordon (speaking for the Court) declared that this case was “not the proper vehicle for considering the question of principle that sought to be agitated” by Dr. thaler.

This leaves open the possibility for the High Court to deal with this issue in the future, if a “suitable vehicle” is filed with the Court. In the meantime, it remains to be seen whether the Australian Government considers that changes to the Act or Regulation are required.

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