The Commissioner of Patents will appeal the Australian Federal Court's recent decision in Thaler v Commissioner of Patents [2021] FCA 879, to allow machines to be recognised as inventors on a patent application, on the basis that the decision is 'incompatible' with Australian patent law.

University of Surrey Professor Ryan Abbott commenced more than a dozen patent applications internationally on behalf of Dr Stephen Thaler, seeking to have Dr Thaler's Artificial Intelligence (AI) device known as DABUS recognised as an inventor. They argued that DABUS can autonomously perform the 'inventive step' required to be eligible for a patent.

Dr Thaler's case tests the boundaries of the patent system by moving from encouraging people to invent things, to encouraging people to build Artificial Intelligence that can invent things.

In February 2021, Dr Thaler's application was originally rejected on the basis that a human must be named the inventor. On 30 July 2021, the Federal Court overturned the decision and set a ground breaking precedent that Artificial Intelligence systems can be legally recognised as an 'inventor' in patent applications.

However, Justice Jonathan Beach clarified that such a non-human inventor cannot be an applicant for a patent or a grantee of a patent, ultimately denying the AI any property rights. Instead, Dr Thaler would continue to be the owner of any patents that would be granted on inventions by DABUS.

The Commissioner of Patents has appealed this decision on the basis the current legislative framework does not permit an Artificial Intelligence to be an inventor. They argue that the Patents Act 1990 (Cth) does not define the term 'inventor', meaning it is considered to have its ordinary meaning. The meaning of 'inventor' has been held to be inherently human and thus, does not extend to AI.

The Australian Government has confirmed that the decision to appeal does not represent a policy position on whether AI should or could ever be considered an inventor on a patent application. Instead, the appeal is focused on the current limits of the current law, as well as the interpretation of the patents legislation.

In June 2021, the Australian Government introduced an AI action plan, which aims to ensure all Australians share the benefits of an AI-enabled economy.

This action plan sets out the Australian Government's path towards ensuring responsible use of AI to strengthen Australia's economy, as well as quality of life generally for citizens. It demonstrates the Australian Government's commitment to developing and adopting AI in order to both transform Australian businesses and solve national challenges.

Holman Webb expects the appeal decision of the Full Federal Court to be particularly interesting, and will keep readers updated on this matter.

With regard to the appeal; readers should note that even if Dr Thaler's claim is unsuccessful, Justice Beach's judgment and the Australian Government's action plan does demonstrate a growing need and demand for law reform to specifically allow for the advancement of Artificial Intelligence generally, as well as those industries involved in this technological growth.

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