DABUS Down – High Court Dashes Hopes of ‘AI Inventor’ Advocates

On Friday 11 November 2022, three judges of the High Court of Australia (Gordon, Edelman and Gleeson JJ) refused – with costs – Stephen Thaler’s application for special leave to appeal a decision of the Full Court of the Federal Court of Australia determining that the (alleged) ‘AI inventor’ DABUS cannot be named as an inventor for the purposes of applying for a patent in Australia.  This brings to an end the efforts of Dr Thaler – and his ‘sponsor’, Artificial Inventor Project leader Professor Ryan Abbott – to achieve recognition for machine inventors under Australian law via the courts.  I have long argued that even if machines are capable of autonomous invention without human involvement (which remains, for the present, a dubious claim), it is far from obvious that granting patents for machine-generated inventions is economically or socially desirable.  The High Court’s refusal to weigh-in at this time places the issue back in the hands of the legislature to determine whether any change to the law is required.  However, any reforms should be preceded by a proper enquiry into the pros and cons, including consultation with experts, interested stakeholders, and the wider public.

To be fair, the High Court did not appear to completely shut the door on patents being granted for machine-generated inventions under the existing law.  The judges who heard Thaler’s application seemed open to the possibility that a human inventor might be identified in such cases, or perhaps that there might be no inventor but that someone might nonetheless be entitled to obtain a patent on the invention.  However, this particular case provides the Court with no factual basis to consider such alternative options, and the judges therefore did not consider it a suitable case in which to grant special leave to appeal.

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Tags: Appeal, Artificial intelligence, Australia, DABUS, High Court, Inventorship, Patent law

Upcoming Online Conference on ‘Inventorship in Patent Law’

On 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.

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Tags: Artificial intelligence, Australia, DABUS, European Patent Office, Germany, Inventorship, UK, US

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

In 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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Tags: Appeal, Artificial intelligence, Australia, DABUS, Inventorship, Patent law

Australian Appeals Court Seems Sceptical of Push to Name DABUS ‘AI’ as Inventor

On 9 February 2022, the appeal by the Commissioner of Patents against the decision of Justice Beach finding that the ‘AI’ machine known as DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) could be named as inventor on a patent application filed by Dr Stephen Thaler, was heard before an expanded Full Bench of the Federal Court of Australia.  The five-judge panel comprised Chief Justice Allsop, and Justices Nicholas, Yates, Moshinsky and Burley.  The appointment of an expanded panel (three judges is usual), including the Chief Justice, is notable, and suggests that the court considers the question of whether a machine can be an inventor for the purposes of the Patents Act 1990 to be one of particular legal importance.  The case was argued for Dr Thaler by David Shavin QC (who also appeared at first instance), and for the Commissioner of Patents by Sophie Goddard SC (appearing for the first time in this matter).  Hamish Bevan (who represented the Commissioner at first instance) argued the Commissioner’s case in reply.  The proceedings were conducted via video conference, and I observed online.

I think that it is fair to say that Dr Thaler did not experience such a smooth ride on appeal as he did at first instance.  Where Justice Beach seemed positively enthusiastic about the idea of allowing patent applications to be filed, and patents granted, for inventions autonomously devised by machines, the judges on the Full Bench appeared sceptical of a number of the arguments presented on behalf of Dr Thaler, and at times subjected Mr Shavin to fairly sharp questioning and criticism.  There are some aspects of the original decision that are unlikely to survive the appeal, although Dr Thaler only requires one line of reasoning to stand in order to prevail.

Based on the arguments presented, there are a number of sub-questions that the Full Court may need to decide.  First, there is a question of whether the case is simply about determining the meaning of the word ‘inventor’ as a matter of pure statutory construction, or about deciding whether or not to develop the concept of the inventor according to a common law methodology.  Either way, the court then needs to decide whether or not a non-human, machine inventor should be included.  In doing so, it may need to consider whether non-human inventors are compatible with other provisions of the Act, and in particular with the section that deals with the entitlement to be granted a patent.  A machine cannot possess or assign intellectual property rights, so provisions that most naturally apply to transfers of title between (natural or legal) persons may not necessarily be compatible with ‘AI’ inventors.  Justice Beach found that two different mechanisms specified in the legislation could apply to enable Dr Thaler to claim ownership of patent rights on inventions made by DABUS.  He will need at least one of these to survive the appeal.

There are a number of avenues by which the Commissioner could succeed in her appeal, but by the same token there are multiple opportunities for Dr Thaler’s defence of the appeal to be successful.  It is difficult to predict which lines of reasoning the court may adopt, and indeed it is not unlikely that the judges will hand down multiple concurring and/or dissenting opinions.  On balance, my sense is that the appeal is more likely than not to succeed – perhaps by a majority rather than unanimous judgment.  If so, then Australia will rejoin the many other jurisdictions in which corresponding applications naming DABUS as inventor have been rejected.

The remainder of this article provides a summary of the major arguments presented at the hearing.  It is somewhat lengthy, but considerably less so than the full day spent at the Federal Court!

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Tags: Appeal, Artificial intelligence, Australia, DABUS, Inventorship, Patent law

DABUS Again Denied in the US and the UK, Part III – Implications for Australia

In both the US and the UK, patent offices have refused to allow applications filed by Dr Stephen Thaler to proceed, on the basis that the named inventor – an ‘AI’ machine dubbed DABUS – is not a human being.  In the first article in this series I looked at the US approach to the role of the inventor in patent law and practice, and at the recent decision of Judge Leonie M Brinkema in the United States District Court for the Eastern District of Virginia (‘EDVA’) upholding the USPTO’s decision.  In the second, I discussed the split decision of the Court of Appeal of England and Wales, which upheld (by a 2-1 majority) the decisions of the UK Intellectual Property Office (UKIPO) and the High Court.

In Australia, the Patent Office also refused to allow a corresponding application by Dr Thaler to proceed.  In contrast to the US and the UK, however, that decision was overturned by Justice Beach in the Federal Court.  The Commissioner of Patents has now appealed that ruling to a Full Bench of the Court (case no. VID496/2021).  In this article, I will be looking at the potential implications of the recent US and UK decision for the conduct and outcome of the appeal in Australia.

It should be said at the outset that the US law is very different to that of Australia, and it is therefore unlikely that anything in Judge Brinkema’s legal reasoning will be influential upon the Full Court.  It has also become apparent through the UK High Court and Court of Appeal decisions that while the UK law shares some similarities with the corresponding provisions of the Australian Patents Act 1990, there are also some significant differences.  Even so, there are aspects of the reasoning of Lord Justice Arnold in the Court of Appeal that the Australian appeals court may consider persuasive, and that could therefore influence the outcome here.

There are two key questions likely to be addressed in the appeal, both of which also arose in the UK, although only the first received substantive attention in the US.  These are:

1. Can DABUS, as an ‘AI’ machine and not a human being, validly be named as an inventor on a patent application?
2. Can Dr Thaler, not being (at his own insistence) the inventor, establish a proper legal basis for entitlement to the grant of patents on inventions said to be generated by DABUS?

I shall look at each of these questions in turn.

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Tags: Artificial intelligence, Australia, DABUS, Inventorship, Patent law, UK, US

DABUS Again Denied in the US and the UK, Part II – the Split Decision in the UK

In the first article in this series I looked at the US approach to the role of the inventor in patent law and practice, and at the recent decision of Judge Leonie M Brinkema in the United States District Court for the Eastern District of Virginia (‘EDVA’) upholding the USPTO’s decision to refuse two patent applications on the basis that the ‘AI’ machine DABUS is not a human being and therefore cannot be an inventor under US law (Stephen Thaler v Andrew Hirshfeld and the US Patent and Trademark Office, Mem. Op. [PDF 998kB]).  In this article, I shall turn my attention to the split decision of the Court of Appeal of England and Wales in Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374, in which parallel efforts to name DABUS as an inventor have also been rejected, with Thaler’s appeal being dismissed despite a weighty dissent by Lord Justice Birss.

The issues in the UK case are somewhat different, and more nuanced, than in the US.  While all three judges on the Court of Appeal agreed that an ‘inventor’ under the UK law must be a human being, the fact that DABUS is a machine was not immediately determinative of the outcome.  An inventor is not required to play any active role in the filing, prosecution, or grant of a patent in the UK, so arguably there remains a question as to whether an application can be permitted to proceed even if a legally valid inventor has not been – or cannot be – named.  In the event, the answer to this question turned on whether or not the applicant (i.e. Dr Thaler) could satisfy statutory requirements to name the inventor, and to indicate how he is entitled to be granted patents on inventions that he did not claim to have devised himself.

Lord Justice Arnold and Lord Justice Birss disagreed on the outcome, with the tie being broken by Lady Justice Elisabeth Laing, agreeing with Arnold LJ that the DABUS applications should be deemed withdrawn. 

Arnold LJ is the preeminent patent law specialist on the Court of Appeal.  He was elevated to the Court of Appeal in 2019, after being appointed to the High Court in 2008, and as Judge in Charge of the Patents Court in April 2013.  In March 2016 he was appointed as an External Member of the Enlarged Board of Appeal of the European Patent Office.  Impressive as this is, however, Birss LJ is no lightweight.  In 2010 he was appointed as a Specialist Circuit Judge sitting in what was then the Patents County Court.  In 2013 he was appointed to the High Court, and in 2019 he filled the place formerly held by Arnold LJ as Judge in Charge of the Patents Court, before being elevated to the Court of Appeal in January 2021.

So this is a case in which the dissenting judgment must be taken seriously, especially with the possibility still open of an appeal to the Supreme Court.  But for now, at least, the balance of the law remains against DABUS in the UK.

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Tags: Artificial intelligence, DABUS, Inventorship, Patent law, UK

DABUS Again Denied in the US and the UK, Part I – the Approach in the US

On 27 August 2021, the Commissioner of Patents lodged an appeal (case no. VID496/2021) against the decision of Justice Beach in the Federal Court of Australia finding that the ‘AI’ machine known as DABUS could be named as sole inventor on an Australian patent application.  Unusually, and presumably in recognition of the media and public interest generated by this case, IP Australia took the step of announcing the filing of the appeal, while emphasising that ‘[t]he appeal is centred on questions of law and the interpretation of the patents legislation as it currently stands’ and that ‘[t]he decision to appeal does not represent a policy position by the Australian Government on whether AI should or could ever be considered an inventor on a patent application.’  The appeal will most likely be heard by a Full Bench of the Federal Court comprising three judges, although in rare cases deemed sufficiently significant a five judge panel may be assigned.  A hearing could take place as early as November this year, but at this stage it seems more likely to be scheduled for early in 2022.

In the meantime, however, parallel test cases initiated by Surrey University Professor Ryan Abbott’s Artificial Inventor Project have been making their way through the US and UK courts.  On 2 September 2021, Judge Leonie M Brinkema in the United States District Court for the Eastern District of Virginia (‘EDVA’) rejected Dr Stephen Thaler’s appeal against the USPTO’s decision to refuse two patent applications on the basis that DABUS is not a human being and therefore cannot be an inventor under US law (Stephen Thaler v Andrew Hirshfeld and the US Patent and Trademark Office, Mem. Op. [PDF 998kB]).  And on 21 September 2021, a majority of the Court of Appeal of England and Wales (Lord Justice Arnold and Lady Justice Elisabeth Laing, Lord Justice Birss dissenting) upheld a decision of the High Court which agreed with the UK Intellectual Property Office (UKIPO) that Thaler’s applications should be deemed withdrawn because of his failure to identify a natural person as inventor (Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374).

These cases are, of course, of interest because they concern the fascinating question of whether non-human machines can be inventors for the purposes of obtaining patent.  But they are also interesting for what they reveal about the differences between the treatment of inventors under US and UK law.  In the US the inventor is central and indispensable – a position that arguably derives ultimately from the Constitutional authority for Congress to make laws ‘promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries’.  In the UK, however – and in the view of Birss LJ in particular – the identity of the inventor is almost irrelevant in the majority of patents applied for, prosecuted and granted.

I will cover these latest developments in the DABUS saga over a series of three articles.  In this first article, I will look at the approach taken to the role of the inventor in the US, how it differs from other jurisdictions, and the recent decision from the EDVA.  The second article will cover the split decision in the UK, and how the differing opinions of eminent patent jurists Arnold LJ and Birss LJ stack up.  Finally, in the third part I will look at where Australia sits, and consider whether either of the US and UK decisions may be of any relevance in the upcoming Full Court appeal.

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Tags: Artificial intelligence, DABUS, Inventorship, Patent law, UK, US

In Becoming the First Country to Recognise Non-Human Inventors, is Australia a Hero of Progress, or a Chump?

As I recently (tentatively) predicted, on Friday 30 July 2021 Justice Beach in the Federal Court of Australia handed down a judgment giving Australia the dubious honour of becoming the first country in the world to legally recognise a non-human as a valid inventor on a patent application: Thaler v Commissioner of Patents [2021] FCA 879.  I would suggest that the remarkable speed with which this unnecessarily lengthy (228 paragraphs) decision was rendered, after being heard on 2 July 2021, may reflect the judge’s enthusiasm for issuing such a ground-breaking ruling.  Unfortunately, I do not share that enthusiasm, and I am confident that there are many others who are equally uncomfortable with the outcome.  My hope is that this includes officials within IP Australia and the Department of Industry, Science, Energy and Resources, and that the decision will be duly appealed to a Full Bench of the court.  It is, in my view, deeply regrettable that the Commissioner of Patents did not put on a stronger defence in the first instance because, even though an appeal was probably inevitable either way, the worldwide publicity that this decision is now generating is not necessarily beneficial for Australia.

The judge summarised his reasoning (at [10]) that:

…in my view an artificial intelligence system can be an inventor for the purposes of the Act. First, an inventor is an agent noun; an agent can be a person or thing that invents. Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor. Third, nothing in the Act dictates the contrary conclusion.

The patent system faces many challenges, but right now a need to grant more patents in a wider range of circumstances in not one of them.  We are in the grip of a global pandemic, and very serious questions are being asked about whether patents deliver a net benefit to the people of the world by incentivising the development of new vaccines and treatments, or whether they have the detrimental effect of denying affordable access to vital care and protection in poor and developing nations.  While I am firmly in the former camp, it only becomes harder to defend the patent system when opponents see the law expanding access to allow inventions generated by machines – potentially including those owned and controlled by giant corporations.

The standing and reputation of Australia and our patent laws are also at risk.  The country is already the target of criticism – rightly or wrongly – for declining to support calls for a waiver of IP provisions of the WTO Agreement on Trade-Related Aspects of Intellectual Property (TRIPS).  The Federal Court’s decision in Thaler is receiving global attention, and not all of it is positive.  One tweet (in Spanish) compares Australia’s patent-friendly approach unfavourably with the infamous incident of an early innovation patent being granted for a ‘circular transportation facilitation device’, a.k.a. the wheel.

Just because patents are (or, at least, can be) good, it does not follow that more patents, generated in more ways, by more entities, must be better.  Australia should not think that we will necessarily come across as a socially and technologically progressive nation by ‘leading the way’ on allowing patents to be granted for inventions generated by non-humans.  On the contrary, we risk being left out on our own and looking like chumps.  The United States will not follow our lead – there are Constitutional, statutory and procedural barriers to permitting US patent applications naming non-human inventors.  The European Patent Office will not follow in the foreseeable future – it has already established its position via an academic study and discussions with member states of the European Patent Convention.  The UK has so far rejected any expansion of inventorship to non-humans.  And, contrary to recent reports (and the claims of the Artificial Inventor Project’s Ryan Abbott), the recent grant of a patent in South Africa naming DABUS as inventor indicates nothing about that country’s law or position on the issue.  As South African patent attorney Pieter Visagie has explained, the application effectively avoided any scrutiny of the legitimacy of the inventor by virtue of being filed via the international (PCT) system.

So what does Australia gain by being the first – and possibly only – country in the world to legally recognise non-human inventors?  Nothing, as far as I can see, other than a whole lot of unneeded publicity and global scrutiny of our patent laws.  If we are lucky, we will not receive many serious patent applications for inventions generated by machine inventors, and little practical harm will be done.  At worst, however, we could become the only country in the world to grant patents on such inventions, mostly filed by foreign applicants, creating exclusive rights that are enforceable only in Australia to the relative detriment of Australian innovators and consumers.

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Tags: Artificial intelligence, Australia, DABUS, Inventorship, Patent law

Could Australia Become the First Country to Recognise Non-Human Inventors?

On 2 July 2021, a hearing took place at the Federal Court of Australia in Melbourne, before Justice Jonathan Beach, in the matter of Stephen Thaler v Commissioner of Patents.  This case concerns the question of whether a patent may be granted for an invention that was devised by a machine, rather than by a human inventor.  Back in February, I reported on the refusal by the Australian Patent Office to accept as valid an Australian patent application naming an ‘artificial intelligence’ going by the name DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) as inventor.  And in March I reported that an application had been filed in the Federal Court for review of the Patent Office decision.

Regular readers will know my position on this issue – I do not consider it appropriate at this time (or, potentially, ever) to grant patents for inventions devised entirely by automated means, such that there is no human inventor.  I have written an article targeted to a more general audience, which has been published by InnovationAus, providing an overview of the Australian case, and broadly discussing my concerns.  Here I will be going into more detail of the arguments presented at the recent hearing, and why I think it would be very unfortunate if Justice Beach were to decide that this is a suitable case for judicial development of the law to embrace machine inventors, as he is being encouraged to do by Thaler.

I was able to attend the hearing virtually, since it was being held via web conference.  Thaler’s team, led by experienced and highly-regarded barrister David Shavin QC, appeared in person in the Melbourne courtroom with Justice Beach, while the Commissioner of Patents was represented by Hamish Bevan, appearing via video from Sydney (subject to restrictions, due to an ongoing COVID outbreak).  Although I disagree with the proposition, I thought that Mr Shavin presented a persuasive argument that the relevant provisions of the Australian Patents Act 1990 can, and should, be interpreted to encompass non-human inventors, and that Mr Bevan perhaps did not do enough to counter this argument.  I formed the impression that Justice Beach just might be minded to ‘develop’ the Australian law to permit patent applications having no human inventor, in part because he was not presented with any particularly good reasons not to do so.

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Tags: Artificial intelligence, Australia, DABUS, Inventorship, Patent law

‘AI Inventor’ Update – DABUS Decision Goes to Federal Court

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.

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Tags: Artificial intelligence, Australia, DABUS, Inventorship, Patent law

DABUS Denied Down Under – Australian Patent Office Formally Rejects AI Inventor

Back in December 2020 I reported on the progress of an Australian patent application naming an ‘artificial intelligence’ going by the name DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) as inventor.  The application – no. 2019363177 – was derived from an international application filed under the Patent Cooperation Treaty (PCT), and names Dr Stephen Thaler, the developer of DABUS, as applicant.  At that time, the Australian Patent Office had raised an objection to the naming of a machine as inventor, and sought further submissions from the applicant on this issue.  I anticipated that the case would be referred to a hearing officer to determine the matter by way of a formal decision, and predicted that Dr Thaler’s rather unconventional assertions that an AI can be an inventor, and that he is entitled to receive any resulting patents by virtue of ownership of the AI, were unlikely to be accepted by the Patent Office.

That has all now come to pass, with a decision of a delegate of the Commission of Patents issued on 9 February 2021: Stephen L. Thaler [2021] APO 5.  In accordance with the plan language of the Australian Patents Act, and established legal principles, the delegate has determined that a patent can only be granted to a person, that a machine is not a person, and that there is no mechanism whereby the right to apply for a patent on an invention devised by a machine can be legally transferred to any person.

In short, a patent application naming a non-human inventor cannot be validly filed, regardless of who is named as the applicant.  A corollary of this (although not addressed in the decision) is that a patent on an invention devised by a machine can never be validly granted, even if the true nature of the inventor is concealed from the Patent Office, because there is simply no mechanism for any named applicant to derive a legal right to apply.  In practice, applicants are required to provide the Patent Office with a declaration of entitlement, and in the case of a machine invention this declaration would necessarily be invalid and/or false.

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Tags: Artificial intelligence, Australia, DABUS, Inventorship, Patent law

DABUS Down Under – Can an AI ‘Communicate’ an Invention to a Human Applicant?

Back in September I reported that an application naming an ‘artificial intelligence’ going by the name DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) as inventor had been filed in Australia.  The application – no. 2019363177 – was derived from an international application filed under the Patent Cooperation Treaty (PCT), and names Dr Stephen Thaler, the developer of DABUS, as applicant.  The Australian Patent Office issued a formalities report, objecting that the application does not comply with the Patents Regulations 1991, because ‘it is the Commissioner’s understanding that inventors for the purposes of the Patents Act 1990 must be natural persons.  As DABUS is not a natural person the Commissioner is of the view that no inventor has been supplied for the purposes of Regulation 3.2C(2)(aa).’  There has since been further correspondence between Dr Thaler’s Australian patent attorneys and the Patent Office.  Thus far, however, the initial objections have not been overcome, and it seems likely that the matter is headed for a hearing, which will result in a formal decision being issued.

On 19 November 2020, the applicant responded to the initial formalities report.  For some reason, this response is not currently available in the public ‘eDossier’ for the application, however the Patent Office’s reply of 25 November 2020 sets out the substance of the response:

You have indicated that there is no explicit definition of an inventor, which by implication means that an artificial intelligence machine can be an inventor. You have also stated that it is sufficient for the purposes of the Patents Act 1990 if the applicant derives title to the invention from the inventor under section 15(1)(c). In the present case this would require DABUS to transfer title to Stephen Thaler. It is not apparent that DABUS is capable of executing an assignment, or has a contract of employment (for instance).

Interestingly, however, the Patent Office reply goes further, by suggesting an alternative theory (not, it seems, put forward in the applicant’s response) under which the Dr Thaler might assert the right to be granted a patent:

It may be that you are suggesting that Dr Thaler should be regarded as the communicatee of DABUS (a category of applicants recognised under section 34(1)(e) of the 1952 Act, and amalgamated into the present section 15(1)(c) - JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2006] FCAFC 141). According to traditional principles the communication should be for the purpose of obtaining a patent (H's Application (1955) 73 RPC 197).

The significance of identifying a mechanism for Dr Thaler to derive rights to DABUS’ inventions is that, in the Office’s view, if DABUS ‘is not capable of transferring or communicating an invention to a person, it would appear to be inconsistent with the structure of the Act for the machine to be treated as an inventor for the purposes of the Act.’  However, quite why the Office should wish to make its own suggestions in this regard is something of a mystery.

The applicant, for his part, appears to want no part of this novel theory proposed by the Patent Office.  In a further reply dated 9 December 2020, his attorneys have argued simply that:

The common law confers ownership of anything produced by DABUS to its owner, the applicant. There is a general rule that the owner of a thing is the owner of the fruits of that thing, much like the owner of a fruit tree is entitled to the fruit produced by that tree. The principle of accession or first possession can apply.

I think that this is the right approach (even though it is unlikely to succeed).  A UK court has already ruled that DABUS is incapable of transferring intellectual property rights to Dr Thaler (or anybody else), and there is no reason to expect a different outcome in Australia.  Furthermore, an analysis of the historical basis for the category of ‘communicatee’ suggests that it may no longer exist under Australia’s current patent laws and that, in any event, it would not provide for Dr Thaler to obtain a patent on DABUS’ inventions.  His best bet is therefore to continue to push the ‘ownership’ line, even though it has so far failed in the UK, the US, and at the European Patent Office.  I believe that it will fail in Australia, also, under the existing law.  But my understanding is that the larger objective of the Artificial Inventor Project, which is backing Dr Thaler’s applications, is to lobby for changes in the law, to recognise AI inventors, and entitlement by way of ownership.

In any event, the Patent Office’s unusual proposition provides an opportunity to delve into this strange historical category of ‘communicatee’.  What is it?  Why did it exist?  Does it still exist somewhere in the modern patent law?  (Readers interested only in Dr Thaler’s prospects of success, and not the historical context, can skip ahead to the section entitled ‘Can Title to an Invention be Derived from an AI?’)

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Tags: Artificial intelligence, Australia, DABUS, Inventorship, Patent law

DABUS Denied – Machines Cannot be Inventors, and the English High Court Agrees

In Thaler v The Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat), the England and Wales High Court has dismissed an appeal by Dr Stephen Thaler from a decision of the UK Intellectual Property Office (IPO), which determined that one or more natural persons must be named as inventor(s) on a patent application and, therefore, that two UK applications naming an ‘artificial intelligence’ called DABUS as inventor were deemed to be withdrawn for failing to satisfy this requirement.  Thaler had refused to identify a human inventor on the basis that no natural person had made an inventive contribution to the inventions disclosed in the applications.  Furthermore, he had identified himself as the applicant, claiming ownership of the inventions on the basis of ownership and control of DABUS.  The court also rejected this theory, finding no legal basis for a machine either to own the intellectual property, or for rights in machine-generated inventions to be transferred to a human owner.

Attempts to name DABUS as inventor on corresponding applications have also been rejected by the European Patent Office (EPO), and the US Patent & Trademark Office (USPTO) [PDF 5.27MB].

Readers who have been following developments in this case will be aware that while Thaler is named as the applicant and developer of DABUS, the real driving force behind efforts to recognise machine inventors is Professor of Law and Health Sciences at the University of Surrey, Ryan Abbott, through his Artificial Inventor Project.  In addition to the patent applications filed at the UK IPO, the EPO, and the USPTO, there is also a single international patent application filed under the Patent Cooperation Treaty (PCT) encompassing both inventions, published as WO2020079499.  Abbott not only heads up the Artificial Inventor Project, he is also named as agent for the PCT application, he represented Thaler in the English High Court appeal, and it has been reported that he is also representing Thaler in a parallel Federal District Court appeal in the US.

The PCT application recently entered the national phase in Australia, as application no. 2019363177.  A formalities report has been issued, objecting that the application does not comply with the Patents Regulations 1991, because ‘it is the Commissioner’s understanding that inventors for the purposes of the Patents Act 1990 must be natural persons.  As DABUS is not a natural person the Commissioner is of the view that no inventor has been supplied for the purposes of Regulation 3.2C(2)(aa).’  Thaler has until 21 November 2020 to either: provide the name or names of natural persons who are the actual inventors; or provide submissions to the Commissioner explaining why DABUS, despite being an artificial intelligence, can be legitimately recorded as an inventor.  I anticipate that Thaler will take the latter option, and that his submissions will be rejected on similar grounds to the UK case, given that the scheme for establishing inventorship and entitlement to the grant of a patent under the Australian Patents Act 1990 is similar to the corresponding UK provisions.

In my opinion, Abbott’s Artificial Inventor Project is misconceived.  His arguments as to why we should recognise non-human inventors are unsupported by any evidence, and amount to little more than a personal opinion.  His methods of pushing the issue through patent offices and into the courts may be successful in generating attention, but they are doomed to fail, and wasteful of administrative and judicial resources.  Furthermore, the very idea that machines might be granted the ‘right’ to be recognised as inventors lacks credibility, and is unlikely to secure widespread public support.

In this article, I shall explain my position in more detail, while also taking the opportunity to discuss the English High Court decision, which is likely to be influential in the Australian case.

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Tags: Artificial intelligence, DABUS, Inventorship, Patent law, Public policy

Free Online Seminar – Machine Inventors, Fact or Science Fiction?

In August 2019 the ‘Artificial Inventor Project’ team led by Ryan Abbott, Professor of Law and Health Sciences at University of Surrey UK, announced that it had filed a number of patent applications naming an artificial intelligence (AI) as inventor.  The AI, called ‘DABUS’, was developed by Missouri-based physicist Dr Stephen Thaler.  The filings – which garnered significant publicity – were a deliberate provocation, calculated to test patent laws and challenge the conventional notion that only a natural person can be an inventor.  The EPO, the UKIPO, and the USPTO have since rejected the applications for failing to meet requirements that an inventor designated in a patent application be a human being.  Even so, various IP organisations, including WIPO, the USPTO, and the EPO, have been actively exploring the implications of machine learning (ML) and AI for patent law and practice, including the question of whether a machine can invent.

So, have we really reached the point at which machines can challenge humans in the realm of creativity and ingenuity?  And, if so, why are we hearing about it from a law professor and a lone developer, rather than in peer-reviewed publications by leading AI research teams, or in media releases from well-known mega-corporations that have invested billions in this technology?  Furthermore, are we really expected to take seriously claims made by Dr Thaler that his AIs exhibit enhanced creativity as a result of infusing symptoms of ‘mental illness’ into their neural networks? 

Personally, I have been astonished at the lack of scepticism towards claims of machine inventorship, not only in the media, but also among many patent professionals, and within reputable IP offices.  Even the World Intellectual Property Organization (WIPO), in a recent draft issues paper on ‘Artificial Intelligence and Intellectual Property Policy’, went so far as to accept that ‘it would now seem clear that inventions can be autonomously generated by AI’, noting that ‘there are several reported cases of applications for patent protection in which the applicant has named an AI application as the inventor.’

Nonetheless, whatever I might think of DABUS as a specific example, major national and international IP organisations are responding to broader challenges presented by emerging ML technologies that, inventorship aside, raise genuine questions in relation to subject matter eligibility, obviousness, and sufficiency of disclosure. And since ML technologies can be applied in almost any field of endeavour, from engineering design through to drug discovery, these issues are not confined to inventions in the IT space.

Last month, I presented a webinar on this topic to members of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA).  I have now recorded a version of that presentation, and am making it available as a free online seminar.  It can be viewed on YouTube, or via the embedded player below.  A PDF copy of the presentation slides [1.12MB] is also available for download.

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Tags: Artificial intelligence, Innovation, Inventorship, Machine learning, Patent law, Patentology seminars

The Impact of Machine Learning on Patent Law, Part 3: Who is the Inventor of a Machine-Assisted Invention?

In the first part of this series of articles, I argued that invention is inherently a creative act, and that since machine learning systems – however impressive or surprising their achievements – are incapable of human-like intelligence, reasoning, agency, or creativity, they therefore cannot ‘invent’.  I acknowledged, however, that machines are certainly increasingly involved as ‘assistants’ in the process of invention.  In the second part of the series I argued that where the result is a patentable invention there must always be at least one human inventor.  In this final part, I want to look at how we should go about identifying the inventor(s) in any given case of machine-assisted invention. 

There are, in fact, three main aspects of machine learning technology in relation to which inventions may arise.  The most rarefied of these is in the underlying machine learning algorithms and architectures themselves.  Comparatively speaking, very few people work in this area, and for the most part they are to be found in universities and research centres. 

Secondly, inventions may arise through the application of machine learning technology to solving problems and/or producing new results, products, and services.  I expect that this is currently the most common type of machine-learning-related invention, particularly given the wide range of software tools now available to assist programmers in implementing the underlying algorithms. 

Thirdly, there are ‘machine-assisted’ inventions, which are generated wholly or in-part by machine learning systems.  Currently, such inventions are relatively rare, considering that few applications of machine learning are actually directed to the generation of new technologies.  However, as machine learning increasingly finds its way into computer-aided design and engineering applications, this may change.

In all cases, however, I would argue that it is possible – and, indeed, necessary – to identify one or more human inventors (and no machine inventors).  To suggest otherwise is, in my view, to misunderstand the true nature, and limitations, of machine learning systems.  In a letter to shareholders, published in 12 April 2017, Amazon CEO Jeff Bezos wrote what is possibly the most succinct and jargon-free summary of what distinguishes machine learning systems from ‘traditional’ programming:

Over the past decades computers have broadly automated tasks that programmers could describe with clear rules and algorithms. Modern machine learning techniques now allow us to do the same for tasks where describing the precise rules is much harder.

The evolution from ‘traditional’ programming to machine learning is not as dramatic as some of the hype might lead us to believe.  Instead of coding the ‘rules’, machine learning developers now build systems that are able to capture and generalise from patterns that exist in their input data.  These systems still operate using rules and algorithms – but now these algorithms determine how they go about doing the capturing and the generalisation, rather than how they produce the final result.  Viewed at an appropriate level of abstraction, then, little has changed, except for the power and scale of our machines.

In view of this, I argue that when it comes to machine-assisted inventions, inventorship will generally arise from successfully designing and applying a machine learning system on the path to achieving an inventive result, even in cases where the underlying software and/or hardware employed may have been developed or supplied by someone else.

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Tags: Artificial intelligence, Innovation, Inventorship, Machine learning, Patent law

The Impact of Machine Learning on Patent Law, Part 2: ‘Machine-Assisted Inventing’

In my previous article, I argued that existing (and foreseeable) artificial intelligence (AI) or machine learning (ML) systems do not exhibit creativity or inventiveness, and are incapable of anything that could reasonably be described as ‘invention’.  I acknowledged, however, that some such systems have generated results that may qualify as patentable inventions.  I therefore concluded with a question: if computers cannot invent, and yet the outcome of running a computer program can be an invention, then who – if anyone – is the inventor?

In addressing this question, it is important to understand that ML systems do not autonomously or independently generate novel outputs.  In my view, this is a fundamental error of understanding in Professor Ryan Abbott’s paper ‘I Think, Therefore I Invent: Creative Computers and the Future of Patent Law’, Boston College Law Review, Vol. 57, No. 4, 2016 (also available at SSRN), which I discussed in the first article of this series.  Abbott contends, in particular, that ‘machines have been autonomously generating patentable results for at least twenty years and that the pace of such invention is likely increasing.’ 

This, I have argued, is simply wrong.  The difference between a computer that is programmed to play the board game Go, and one that is programmed to learn to play Go is, of course, significant.  The former can only make moves that are determined in accordance with its explicit programming, whereas the latter may appear to ‘invent’ new strategies in response to patterns occurring in its training data that have not previously been recognised by human players.  But the appearance of invention is not the same thing as actual invention.  The ML player is still doing nothing more than following the instructions devised by its programmers.  The Google DeepMind AlphaGo system has become the world’s best Go player as a result of years of development, trial, experiment, and experience on the part of its designers.  AlphaGo plays as well as it does simply, and only, because that is what it was designed to do.  In this sense it is no more ‘autonomous’ than any other computer program.

In this second article I will explain why I believe that in the case of all existing (and currently foreseeable) ML systems which may generate inventions as output, there is always a human inventor.  This is consistent with the history and current state of patent law, as well as with the practical and technical reality of ML systems.

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Tags: Artificial intelligence, Innovation, Inventorship, Machine learning, Patent law

The Impact of Machine Learning on Patent Law, Part 1: Can a Computer ‘Invent’?

As a product of millions of years of evolution, the human brain is a remarkable organ.  Recent research indicates that a typical brain comprises somewhere in the vicinity of 80 to 100 billion neurons, and a roughly equal number of non-neuronal cells.  This mass of biological matter is capable of astonishing feats – many of them simultaneously – from enabling us, consciously and unconsciously, to control the behaviour and movement of our bodies, to sensing, comprehending and interacting with the environment around us, to communicating with one another using a variety of languages and symbols, to creating, composing and inventing brand new works of science, technology, and art.  In performing all of these tasks, the brain consumes just 20 watts of power.  By way of comparison, microprocessors at the high end of Intel’s latest Core i7 range consume up to 140 watts.

One relatively recent product of the amazing human brain is the range of technologies often collectively called ‘artificial intelligence’ (AI).  That is the last time I will use this particular phrase without irony in this series of articles – in my view, it is too vague a term, and tends to create an impression that computers are somehow approaching the capacity to operate on-par with human intelligence, which is simply not true.  Nonetheless, such luminaries as Stephen Hawking and Elon Musk have piped up over the past year or so with their concerns that our machines may soon rise up and render us obsolete or, worse still, destroy us!

In a similar vein, there are some people in the field of intellectual property who are starting to ask questions about whether computers can be ‘creative’ or ‘inventive’ and, if so, whether it should be possible for a computer to be named as an inventor on a patent application – or, conversely, whether some humans should be disentitled from inventorship on the basis that their computers, rather than themselves, were the true inventors.  One academic who has been making a name for himself in this emerging field of study is Professor of Law and Health Sciences at the University of Surrey, Ryan Abbott.  Professor Abbott is the author of, among other works on the topic, ‘I Think, Therefore I Invent: Creative Computers and the Future of Patent Law’, Boston College Law Review, Vol. 57, No. 4, 2016 (also available at SSRN), in which he argues that the law should embrace treating non-humans as inventors because this ‘would incentivize the creation of intellectual property by encouraging the development of creative computers.’

As I shall explain, however, I do not agree with Professor Abbott that computers can, or should, be regarded as inventors for the purpose of granting patents.  Furthermore, while Abbott accepts claims that patents have already been granted on what he calls ‘computational inventions’, I firmly believe that a computer is yet to ‘invent’ anything.  In my view, the researchers and technologists who claim otherwise have an interest in promoting a particular perspective, and in doing so they are subtly extending the definitions of ‘creation’ and ‘invention’ to encompass the contribution of their machines, to the detriment of the human operators who are responsible for providing the true creative input in the process.

I am further concerned that, should this view of ‘machine as (co)inventor’ prevail, it will in fact be to the detriment of the patent system.  I think it highly unlikely that lawmakers – whether they be legislators or common-law judges – will embrace the idea of granting patents on machine inventions.  On the contrary, it seems far more probable that if the notion takes hold that computers are actually doing the ‘inventing’ in many cases, it will simply become even more difficult for humans to secure patent protection for computer-implemented, or computer-assisted, inventions.

This is a complex topic that I intend to cover in a series of three articles.  In this first part, I will introduce the field of machine learning, give some examples, and then attempt to dispel some of the hype that has developed around this technology – including in Abbott’s work.  My aim here is primarily to refute the argument that existing machines are capable of engaging in ‘creative’ or ‘inventive’ activity.  In part 2, I will delve into the role of machine learning in assisting with the generation of new inventions.  Finally, I will look at how to go about identifying the (human) inventors in such cases.

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Tags: Artificial intelligence, DABUS, Innovation, Inventorship, Machine learning, Patent law

Inventorship and Ownership – the Importance of Getting it Right

Anybody who works as a patent attorney for any length of time discovers that there is no shortage of people who are perfectly happy to bend the truth a little in order to achieve their objectives.  In the case of patents, such liberties with the facts tend to relate to matters of inventorship and ownership of patent rights.

A case recently decided by the Federal Court of Australia, Neobev Pty Ltd v Bacchus Distillery Pty Ltd (Administrators Appointed) (No 3) [2014] FCA 4, perfectly illustrates this point.  Here, a patent for an invention made by one person (Mr Scott) was filed and granted naming an additional inventor (Mr Hajdinjak) because he ‘wanted his name on the patent’.  Furthermore, the patent is registered in the name of one owner (Bacchus) even though, in truth, the rights are co-owned by Mr Scott’s company, in order to better satisfy the requirements for Bacchus to receive a government grant to assist in commercialisation of the invention.

The true circumstances have come to light because Bacchus got into financial difficulties and was placed in administration.  The administrators propose to sell the business, and the associated intellectual property along with it.  Neobev, which now owns all of the rights previously held by Mr Scott and his company, is disputing the administrators’ entitlement to do this – or, at least, to do it without obligating any purchaser to pay royalties to Neobev under an existing agreement with Bacchus.

The situation is something of a mess, which has cost the parties time and money to resolve in the Federal Court.  The reason for the mess is that the people involved cut corners and did as they pleased when times were good, without regard to what would happen if the circumstances were to change in the future.  The one fortunate aspect of the case is that Australia is not one of those jurisdictions in which incorrect recording of inventorship or ownership is, in itself, fatal to the validity or enforceablity of a patent.

In this case, the court has now ordered (Neobev Pty Ltd v Bacchus Distillery Pty Ltd (Administrators Appointed) (No 4) [2014] FCA 21) that the Register of Patents be rectified to show Mr Scott as sole inventor.  The court has also found that, despite Bacchus being recorded as the sole owner of the patent in question, in reality it is holding the patent in trust on behalf of itself and Neobev as joint beneficial owners.  For now, the Register will not be amended to show this joint ownership, because there is no actual error requiring correction in the trustee being recorded as legal owner, and to record joint ownership would effectively terminate the trust and distribute its property 50/50 between Bacchus and Neobev.  The court was unwilling to do this when it had not heard evidence on the nature of the trust, or considered the relevant state laws in relation to the trust and the powers of the trustee.

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Tags: Entitlement, Inventorship, Ownership

Patents, Invention, Employment and Slavery

Do you know who ‘owns’ your inventions?

I read a fascinating story last week, entitled ‘How the Patent Office Helped to End Slavery’.  It has all the elements a good story needs – celebrity (Jefferson Davis, the future Confederate president), adversity (the denial of the rights of a slave, Benjamin Montgomery), conflict (the Union versus the Confederate patent offices), and the triumph of good over evil (emancipation, and victory of the Union patent laws).

In a nutshell, the question arose as to who ‘owned’ inventions made by slaves, and was thus entitled to ownership of any resulting patent.  It will come as no surprise to learn that slave-owners, such as Jefferson Davis’ brother Joseph, considered that they were entitled to the fruits of the ingenuity of their human chattels. 

However, the US Commissioner of Patents, Joseph Holt, disagreed.  In 1857 he ruled, essentially, that since slaves had no legal rights, they could not possess rights as inventors, and therefore they had no recognisable intellectual property that could be transferred to their owners.  Since neither Jefferson nor Joseph Davis was the first and true inventor of the improved riverboat propeller invented by Joseph’s slave Benjamin Montgomery, and nor could they be the legitimate assignees of any purported ‘rights’ to the invention (since no such rights ever existed), the USPTO simply refused to grant patents to either one of the brothers, or indeed to any other slaveholders who sought to claim ownership of inventions devised by their slaves.

Although the Confederate enacted its own patent law which secured ownership by slaveholders of inventions developed by their slaves, it appears that no such patents were ever granted (and if they had been granted, they would not have been in force for very long).

While ownership of inventions by slave owners is no longer an issue in developed nations, the right of one party to claim ownership of an invention made by another, remains very much a live issue.  We are fortunate that, nowadays, all free women and men are entitled, the the first instance, to ownership of the products of their own ingenuity, should they choose to capitalise on that right.  However, it remains the case that many inventions for which patent rights are sought are made by employees in the course of employment, and are claimed as the property of their employers.

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Tags: Australia, Entitlement, History, Inventorship, US

‘Shades of Gray’ Moves Up to the Federal Court

Last November we wrote about a dispute between Robert Alexander and the Royal Children’s Hospital (RCH) over ownership of an invention – and corresponding patent application – relating to improvements in a medium used to inoculate and grow viruses (see Shades of Gray as Dispute Over Invention Ownership Goes Viral).

At the relevant times, Dr Alexander was Head of Virology at RCH where his primary role was to maintain the Virology/Tissue Culture and Molecular Diagnostics service, which conducts viral diagnostic work on upwards of 10,000 clinical samples at the hospital each year.  The dispute played out before the Australian Patent Office, where a Hearing Officer found that it was one of Dr Alexander’s duties to improve the viral diagnostic techniques used at the hospital, so as to enable RCH to better diagnose viral diseases.  She also found that the ‘growth medium’ invention was made in the course of those duties, and thus belonged to his employer, RCH.

We wrote at the time that:

The decision is subject to appeal to the Federal Court. While this is an expensive option, if the RCH’s example of over 10,000 clinical samples per year is typical, there is potential for the invention of the ‘051 application to be quite valuable, and so an appeal by Dr Alexander may not be out of the question.

We can now confirm that Dr Alexander has indeed appealed to the Federal Court of Australia.

The appeal was filed in the Melbourne Registry on 1 December 2011, and was initially listed before Justice Jessup on 21 December 2011.  A directions hearing is currently set down for 10 February 2012.  The case is file no. VID1352/2011.

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Tags: Appeal, Australia, Entitlement, Inventorship