Legal Update – Artificial Intelligence as an inventor

Date: 2021-08-02

Federal Court decision regarding AI as an inventor

The Federal Court of Australia, in a decision1 delivered on 30 July 2021, has ruled that an artificial intelligence (AI) system can be an ‘inventor’ for the purposes of the Australian Patents Act 1990. The decision, particularly if confirmed by higher courts, has potentially far-reaching consequences, both for the Australian patent system and for the many industries that employ AI in research and development.

The decision arose from an Australian patent application naming a “Device for Autonomous Bootstrapping of Unified Sentience” (DABUS) as an inventor. The DABUS application was also filed in a number of other jurisdictions, including the United Kingdom, Europe and the United States. As we noted in our 2020 article2, the DABUS application was rejected in the United Kingdom and Europe, and has since been rejected in the United States, in each case for failing to name a human inventor. The Australian Patent Office also rejected the application for the same reason, finding that the application fell foul of the Patents Regulations 1991. The Applicant sought judicial review of the Patent Office’s decision, leading to the Federal Court’s decision on 30 July 2021, in which a starkly different conclusion was reached on the question of whether an AI system can be an ‘inventor’.

We will be providing a more detailed analysis of the decision in the coming days. In the meantime, we note that the DABUS application has been remitted back to the Patent Office for further consideration in light of the court’s reasoning set out in the decision. The Patent Office also has the option to appeal the decision to the Full Court of the Federal Court of Australia.

Please contact Akanksha Dahiya for additional information.

1Thaler v Commissioner of Patents [2021] FCA 879

2Artificial Intelligence