27 April 2022

Upcoming Online Conference on ‘Inventorship in Patent Law’

EPO LogoOn Monday 16 May 2022 the European Patent Office (EPO) is running an online conference on ‘Inventorship in Patent Law’.  It commences at 1.30pm Central European Summer Time (CEST), which is 9.30pm on the east coast of Australia (AEST), 9.00pm in South Australia, and a positively civilised 7.30pm in Western Australia.  It is, unfortunately, a little less accessible to people in New Zealand, where it will be 11.30pm.  The total running time is two hours and forty minutes, so the event will finish a little after midnight here in Melbourne.

I am promoting the conference because I will be participating on a panel discussing the DABUS ‘AI inventor’ decisions in various jurisdictions.  It is not in doubt that I will be the least illustrious of the panellists.  The other participants are:

  1. Wolfgang Sekretaruk, who is Chairman of the Legal Board of Appeal of the EPO, Deputy of the President of the Boards of Appeal and Head of the Legal Services of the Boards of Appeal, and will be discussing the EPO decisions on the DABUS applications;
  2. Professor Duncan Matthews, of the Queen Mary, University of London School of Law, who will be discussing the UK decisions;
  3. Professor Dr jur. Ansgar Ohly, of the Ludwig Maximilian University of Munich, and the University of Oxford Faculty of Law, who will be discussing the German case; and
  4. Professor Dan L Burk of the University of California, Irvine, who will be discussing the US case.

I will, of course, be talking about the position in Australia – which is arguably the most interesting, given that we were the only country to (briefly) recognise DABUS as a legitimate inventor.

Our session of the conference will comprise a series of brief (10 minute) presentations on the position in each jurisdiction, followed by a 30 minute panel discussion.

Prior to the panel session, there will be a 20 minute presentation from Axel Voss, Member of the European Parliament, on the European approach to AI.  This will be followed by an introduction to the DABUS applications by the EPO’s Heli Pihlajamaa as a lead-in to the panel.

The panel session will be followed by a presentation on ‘the right to a patent, its origins and the consequences of the fundamental principle that the right to the patent is originally vested with the inventor’ from Martin Stierle, Associate Professor in Intellectual Property Law at the Faculty of Law, Economics and Finance at the University of Luxembourg.

The conference is free of charge, however registration is required in order to obtain the link to the online session (via Zoom).  Registered trans-Tasman patent attorneys should be able to claim 2.5 CPE hours for attendance at the full event.

DABUS Exited with Fatal Exception: Human Agency Required in Development of an Invention

System ErrorIn a decision handed down on 13 April 2022, a panel of five judges of the Federal Court of Australia (‘Full Court’) overturned last year’s controversial ruling by Justice Jonathan Beach, determining that the (alleged) ‘AI inventor’ DABUS cannot be named as an inventor for the purposes of applying for a patent in Australia, and that the law requires the inventor to be a natural person or persons: Commissioner of Patents v Thaler [2022] FCAFC 62 (‘Thaler FC’).  Regular readers of this blog will recall that I tentatively predicted this outcome after observing the Full Court hearing earlier this year.  As it turns out, I need not have been so tentative in my prediction.  The decision of the appeals court was fast, unanimous and unequivocal.

The Full Court has taken a conventional approach to determining the meaning of the term ‘inventor’ in the Patents Act 1990, observing (at [83]) that ‘[t]he duty to resolve an issue of statutory construction is a text-based activity’ and that while it is ‘appropriate to consider policy considerations … the surest guide to ascertaining the legislative intention is the language of the text of the legislation itself’.  In the absence of an express definition of ‘inventor’ in the Patents Act, the Court turned its attention to the legislative history, and the overall statutory context, with particular (though not exclusive) reference to the provisions regarding entitlement to the grant of a patent set out in section 15(1) of the Act. 

The Court found (at [105]) that:

…the law relating to the entitlement of a person to the grant of a patent is premised upon an invention for the purposes of the Patents Act arising from the mind of a natural person or persons. Those who contribute to, or supply, the inventive concept are entitled to the grant. The grant of a patent for an invention rewards their ingenuity.

As to whether Dr Thaler, as the owner of DABUS and the person responsible for its creation and operation, could be entitled to the grant of a patent naming the AI machine as inventor, the Full Court found (at [113]) that:

It is not to the point that Dr Thaler may have rights to the output of DABUS. Only a natural person can be an inventor for the purposes of the Patents Act and Regulations. Such an inventor must be identified for any person to be entitled to a grant of a patent under ss 15(1)(b)-(d).

The Court also observed (at [115]) that while ‘the development of patent law since 1624 has not until now been confronted with the question of whether or not an inventor may be other than a natural person’, the law has ‘proceeded on the assumption that only a natural person could be an inventor’.  This includes the key High Court decisions in National Resource Development Corporation v Commissioner of Patents [1959] HCA 67 (‘NRDC’) and D’Arcy v Myriad Genetics Inc [2015] HCA 35 (‘Myriad’), in which the Court proceeded on the basis – as the Full Court put it at [116] – that ‘human agency was required in the development of the invention in suit’.

In criticising the approach taken by the primary judge, the Full Court stated (at [120]) that ‘the Court must be cautious about approaching the task of statutory construction by reference to what it might regard as desirable policy, imputing that policy to the legislation, and then characterising that as the purpose of the legislation.’  Furthermore, the Full Court noted (at [121]) that the case was decided subject to the agreed facts that DABUS was an inventor and that Dr Thaler was not, but that ‘the characterisation of a person as an inventor is a question of law’ and ‘[t]he question of whether the application the subject of this appeal has a human inventor has not been explored in this litigation and remains undecided.’ 

The decision brings Australia back into line with other jurisdictions, including the US, the UK, Germany, the European Patent Office and Taiwan, where the naming of a machine as inventor has been found to be incompatible with patent laws.  However, Dr Thaler’s legal avenues are not yet exhausted in Australia.  In an email to Law360 (paywalled, unfortunately) Professor Ryan Abbott (whose Artificial Inventor Project is the true driving force behind the DABUS patent applications and court cases) has confirmed that they ‘plan to seek leave to appeal’ to the High Court.  I am going to be less tentative this time, and predict that the High Court will deny any application for special leave.  The Full Court’s decision is plainly correct, and any amendment of the law to permit non-human inventors is now a matter for legislators, following appropriate public consultation and consideration of the full consequences of such a development.

Read on for a more detailed analysis of the Full Court’s decision.

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