Australia Appeal Decision Reverses Direction on AI Inventorship | Blogs | Innovative Technology Insights

Over the past few years technology evangelist and inventor Stephen Thaler, together with the Artificial Inventor Project, has campaigned for patent law changes across jurisdictions to recognize artificial intelligence (AI) as an inventor on patent applications. To further their goal, the group filed patent applications in various jurisdictions around the world listing an AI agent named “DABUS” as the sole inventor. Traditionally, only humans who contributed to an invention’s conception may be listed as inventors on a patent application. But Thaler’s patent applications ran contrary to this convention, proposing that DABUS should be listed as the inventor because the invention disclosed in the patent applications was produced entirely by the AI agent without human involvement.

Patent offices around the world, including Europe and the U.S., widely rejected the applications because they listed the DABUS AI as the inventor, so Thaler took the issue to the courts. Subsequently, courts across Europe and in the U.S. confirmed that their patent laws do not recognize AI agents as inventors on patent applications. By August 2021, there were two outliers – South Africa and Australia. Even though South Africa granted a DABUS application, the country lacks a substantive examination process and South African patent law experts doubt the DABUS patent will survive judicial scrutiny. But Australia became an outlier of a different sort.

Last year, Australia was the first jurisdiction with substantive patent examination in which a court affirmatively said that the country’s patent law recognizes AI-inventorship. In that case, the judge of a Federal Court of Australia ruled that DABUS could be listed as an inventor after interpreting the ordinary meaning of “inventor” under the Australia Patent Act as not restricted to only humans. The court also found that not recognizing AI inventorship would be detrimental to the objective of promoting innovations.

But in the latest episode of the DABUS saga, a higher court brought Australia back in line with the rest of the world. A panel of judges of the Full Court of the Federal Court – Australia’s second highest judiciary body – reversed the lower court’s decision, relying on a line of reasoning from a ruling by the High Court of Australia – the country’s apex judiciary body – that used the phrase “human action” to define patent eligible subject matter. The panel also noted that the legislative history of the Australian Patent Act shows that the “origin of entitlement to the grant of a patent lies in human endeavor.” Applying this framework, the Full Court held that the DABUS cannot be listed as an inventor for the patent application, because Australian patent law recognizes only human inventors.

For now, Australia is now aligned with the world’s other jurisdictions. Patent offices across the world continue to confirm that inventors must be human, which precludes AI agents from being listed as inventors on their own. We continue to watch to whether Thaler presses for an appeal in the High Court of Australia and in appellate courts around the world.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.