On 11 November 2022, the High Court refused Dr Stephen Thaler’s application for special leave to appeal the Commissioner of Patents v Thaler [2022] FCAFC 62 decision handed down in April. As a result, it is now settled law in Australia that AI is not capable of being named as an inventor on a patent application.
In 2019, Dr. Thaler filed patent applications in various jurisdictions including Australia, South Africa, the European Patent Office, United Kingdom, United States and New Zealand, which listed his artificial intelligence invention, DABUS, as the inventor itself. In Australia in the first instance, the Deputy Commissioner rejected the application on the basis that the inventor must be a human. Dr. Thaler appealed this decision to the Federal Court in 2021, which upheld the appeal (effectively granting AI ‘inventor’ status). The position was subsequently reversed by the Full Federal Court earlier this year.
In its decision, the Full Federal Court did not accept that its ruling meant that applications to register an invention ‘developed’ by an artificial intelligence would necessarily fail for lack of an ‘inventor’. That is, an invention developed by AI could still be patentable. There is still an open question as to whether, if such an invention is capable of registration as a patent, the inventor would be the person who trained the artificial intelligence, the person who decided upon the specific inputs to give rise to the invention, or someone else entirely. However, with High Court’s refusal of Dr Thaler’s application to appeal the decision, it is clear that the inventor cannot be the artificial intelligence itself.
Further detail regarding the Full Federal Court’s earlier decision is available at this link.
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For advice regarding protection of inventions and patent strategy generally, please contact Hamilton Locke’s intellectual property team.
