In a fairly predictable development, Stephen Thaler has asked the Federal Court of Australia to review the Patent Office’s finding in February that a patent application cannot be validly filed in this country naming a machine as inventor. The ‘Application for Judicial Review’ was filed on 9 March 2021 in the Victorian Division of the court, and has been assigned number VID108/2021. Having been represented by Davies Collison Cave (DCC) in the patent application filed at the Patent Office, Thaler is represented in the Federal Court proceeding by Allens. The reasons for this change are unclear – DCC incorporates a legal practice as well as its patent and trade marks attorney practice, and could presumably have handled the Federal Court application. However, it is not unusual for applicants to switch representatives when moving from the Patent Office to the courts, either from necessity, or due to a perception that different firms have particular strengths in different areas of practice.
While the case may be casually characterised as an ‘appeal’ against the Patent Office decision, it is not technically an appeal under the Patents Act 1990. The Act, and the Patents Regulations 1991, expressly set out the various decisions that are appealable to the Federal Court, and the lapsing of an application for failing to identify a valid inventor is not such a decision. Instead, the application for review is made under the Administrative Decisions (Judicial Review) Act 1977 (ADJR Act), which provides more generally for review of administrative decisions by the Federal Court.
To be precise, what has happened in this case is that the patent application was filed in Australia as the national phase of PCT application no. PCT/IB2019/057809. Regulation 3.2C(2)(aa) requires the applicant to ‘provide the name of the inventor of the invention to which the application relates’. The inventor has been identified as ‘DABUS, The invention was autonomously generated by an artificial intelligence’. The Patent Office has found that a machine cannot be treated as an inventor, and that the applicant has failed to meet the requirements of Regulation 3.2C, after being directed to do so as required by Regulation 3.2C(4). Failure to comply with this direction within two months means that the application lapses under Regulation 3.2C(5).
There is, it should be noted, absolutely nothing in the Patents Act 1990 that specifically authorises the Commissioner to ‘refuse’ an application on the basis of the alleged nature of the inventor. It was only through a process of statutory construction that the Commissioner’s Delegate determined that the word ‘inventor‘ appearing in Regulation 3.2C(2)(aa) does not include a machine. This is not an active rejection of the application. Rather, it leads to lapsing of the application because the formalities requirements of Regulation 3.2C have not been satisfied.
What Thaler will be seeking from the Federal Court, therefore, is a determination that the Patent Office was wrong to find that an artificial intelligence machine cannot be named as an inventor, that the application accordingly does meet the requirements of Regulation 3.2C(2)(aa), and that it did not, in fact, lapse for failing to comply with the formalities direction.
I believe that the Patent Office was absolutely correct in its decision, which is consistent with corresponding findings of the European Patent Office, the UK Intellectual Property Office, the England and Wales High Court, and the USPTO. I am confident that the Federal Court will agree.
The case has been assigned to Justice Beach, and is set down for hearing – which may take place either in-person in Melbourne, or via web conference – on Friday, 2 July 2021.
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