30 Jul 2021

Australian court agrees with South Africa that AI can be inventors

Decision comes just days after IP officials in South Africa became first to approve a patent listing AI as inventor

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The Federal Court of Australia has made the first judicial determination in the world that an AI can be named as the inventor on a patent.

The case, Thaler v Commissioner of Patents, involves the same AI system that became the first in the world to be recognised as the inventor in a patent granted earlier this week by IP officials in South Africa.

Speaking of his decision, Justice Jonathan Beach QC said: “In my view, an inventor as recognised under the Act can be an artificial intelligence system or device. But such a non-human inventor can neither be an applicant for a patent nor a grantee of a patent. So to hold is consistent with the reality of the current technology. It is consistent with the Act. And it is consistent with promoting innovation.”

The AI in question is called Dabus (“device for the autonomous bootstrapping of unified sentience”). A so-called “creativity engine”, it uses artificial neural networks to generate and assess new ideas.

Dabus’ creator, Dr Stephen Thaler, maintains that it is the sole inventor of a food container that improves grip and heat transfer, an area in which he says he has no expertise and so couldn’t have contributed to the patent in a way that would qualify him for inventor’s rights.

Thaler has been represented by a team of lawyers led by Professor Ryan Abbott of the University of Surrey. They have filed patents listing Dabus as the inventor in more than 10 countries around the world since 2018, including China, Japan the US, UK and Europe.

The High Court in England and Wales last year sided with the UK Intellectual Property Office in refusing the applications, accepting that while Dabus created the inventions, it cannot be granted a patent on the grounds that it isn’t a ‘natural person’. The European Patent Office and the US Patent and Trademark Office (USPTO) objected on the same grounds, with Abbott’s team appealing.

In his complaint, Thaler argued that the USPTO denial compels inventors using AI assistance to make misrepresentations, “claiming credit for work they did not perform”, and disincentives the creation of socially beneficial inventions.

His sentiment was echoed by Abbott, who argues that the status quo is no longer fit for purpose and could put investment in AI at risk. Speaking to The Timeshe said that naming the creator of the AI system as the inventor was legally risky, as they would not have substantially contributed to what the AI had created and would therefore be breaking patent law.

He also pointed to the increasing use of AI in R&D to discover new drug compounds and repurpose drugs. In such cases, he said, there may an invention that qualifies for a patent but not a person who qualifies as an inventor and if that means that a patent won’t be granted, it “says to companies that are investing in AI, like DeepMind or Siemens or Novartis, you can’t use AI in these areas”.

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