The Facts

Applicant applies for patent for invention invented by AI system

An applicant submitted a patent application for a new food container that is easy for robots to grasp and stack.

The patent application required that the applicant provide the name of the inventor of this invention.

The applicant named the artificial intelligence system that autonomously generated the invention, as the inventor.

The applicant was the owner of the AI system and the operator of the computer on which it operates. He also wrote the programs used by the AI system and owned the copyright in its source code.

Deputy Commissioner of Patents rejects patent application and applicant seeks judicial review

The Deputy Commissioner of Patents rejected the applicant's patent application on the basis that an AI system cannot be an inventor.

The applicant sought judicial review of the Deputy Commissioner's decision.

The question for determination by the Federal Court of Australia was whether under the Commonwealth Patents Act an AI system could be an inventor.

case a - The case for the Commissioner of Patents

case b - The case for the applicant
  • The applicant was required to name the inventor in his application. By naming the AI system as the inventor, he failed to comply with this requirement.
  • There is no definition of "inventor" in the Act or in the accompanying regulations. As such, the word bears its ordinary English meaning. As any standard dictionary shows, the traditional meaning of "inventor" is a person who invents. At the time that the Act came into operation in 1991, there would have been no doubt that inventors were natural persons, and machines were just tools that could be used by inventors.
  • It would be inconsistent with the provisions of the Act to extend the ordinary meaning of "inventor" now to include machines. In particular, section 15(1), which stipulates when a person may be granted a patent, would become unworkable because it would not be possible to identify a person who could be granted the patent.
  • For example, section 15(1)(a) states that a patent may be granted to a person who is an inventor. Since an AI system is not a person, this section cannot apply if the AI system is taken to be the inventor.
  • Section 15(1)(b) provides that a patent can be granted to a person who "would, on the grant of a patent for the invention, be entitled to have the patent assigned to them". An AI system would be unable to assign a patent to a person under this section because property law does not presently recognise the capacity of an AI system to assign property.
  • Section 15(1)(c) states that a patent can be granted to a person who derives title to the invention from the inventor. For a person to derive title from the inventor, the title must first vest in the inventor. It is not possible for the title to first vest in an AI system, since a machine cannot have a beneficial interest in a patent.
  • If parliament wishes to recognise that an AI system can be an inventor for the purposes of the patent system, it is free to amend the law to cater for this type of technological innovation. However, as this scenario is not reflected in the current statutory scheme, the court is required to uphold the Deputy Commissioner's decision.
  • I provided the name of the inventor, the AI system, on my patent application form as was required. Therefore, the Deputy Commissioner's determination that my application was non-compliant is incorrect.
  • In its ordinary English meaning, "inventor" includes a machine. "Inventor" is an agent noun, meaning a noun denoting someone or something that performs the action of a verb. Here that something is the AI system, making it the inventor of the invention.
  • The Commissioner has misconstrued the Act and regulations, as nothing in them precludes an AI system from being treated as an inventor. I accept that an AI system is not capable of owning or assigning a patent. However, it is still possible to apply section 15(1) of the Act to the circumstances of this case.
  • Under section 15(1)(b), an inventor does not need to have the capacity to assign property. This section has been applied to employee inventions where there is no contract in place that sets out the employer's entitlements. While the employee cannot assign the property, the employer is still able to apply for a patent for the employee invention made in the course of the employee's duties. Similarly, section 15(b) can be applied in circumstances where a third party misappropriates an employee invention and the inventor's employer brings an action seeking equitable assignment from the third party. In such a case the inventor would not be a party to this equitable assignment.
  • Section 15(1)(c) can also be applied to the circumstances of this case. The general rule under common law is that the owner of a thing is the owner of the fruits of that thing (principle of accession or first possession). I possess, own and control the AI system; therefore I own the fruits of the AI system, meaning that title to its invention automatically vests in me.
  • Since the AI system is an "inventor" under the current patent scheme, my patent application was compliant, and the court must overturn the Deputy Patent Commissioner's decision.

So, which case won?

Cast your judgment below to find out

Emma Wei
Intellectual property disputes
Stacks Collins Thompson

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