In the decision of Thaler v Commissioner of Patents,3 the Applicant filed a patent application in which an AI system was listed as the inventor. A judicial review was conducted after the Deputy of the Commissioner of Patents found that the application did not comply with the regulations under the Patents Regulations.4 In the Federal Court, Justice Beach reviewed whether AI may be considered as an inventor based on the grammatical composition of the word ‘inventor’, as it applies to both ‘persons’ and ‘things’ that invent.5 Justice Beach determined that the legislation did not prevent an AI from being named an inventor for the purposes of section 15 of the Patents Act and Reg 3.2C(2) of the Regulations.
On appeal to the Full Federal Court by Thaler, the Court determined that Justice Beach had erred in finding that an AI device or system can be an ‘inventor’ as per the Patents Act,6 contending that only a natural person may claim this title. Considering the construction in statute, the Court adopted a pragmatic, “text-based activity” approach,7 interpreting the language of section 15(1) to apply only to a natural person.8 As an example, the Court noted that section 15(1)(b)9 relates to the assignment of a patent, which would require a legal identity to give effect to that assignment.10 Since AI cannot have a legal identity, this provision does not allow AI to claim title of ‘inventor’. It was argued by the Full Federal Court that their interpretation of section 1511 was correct, given that it is supported by the history of Australian patent laws and legislature.12
The case has raised significant policy questions concerning whether the title of ‘inventor’ should extend beyond natural persons. It highlights the potential issues with intellectual property law associated with AI being an inventor, including who becomes the patentee of a granted patent filed for an invention with an AI inventor, and whether the standard for inventive step will be redefined in the future to incorporate AI.13
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1 Commissioner of Patents v Thaler [2022] FCAFC 62 (‘Thaler’).
2 Patents Act 1990 (Cth) s 15 (‘Patents Act’).
3 Thaler v Commissioner of Patents [2021] FCA 879.
4 Patents Regulations 1991 (Cth) reg 3.2(2)(aa).
5 Thaler (n 1) 39.
6 Patents Act (n 2).
7 Thaler (n 1) 83.
8 Patents Act (n 2) s 15(1).
9 Ibid s 15(1)(b).
10 Thaler (n 1) 108.
11 Patents Act (n 2) s 15.
12 Thaler (n 1) 111-112.
13 Ibid 119.
