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Spark of genius: human vs machine

2 Jun 2022

This article was authored by CW Ling

There’s something big quietly happening here….

Whether you know it or not, our daily lives are now supported by the use of artificial intelligence (AI) systems.  From Google searches to YouTube advertising to self-driving cars, AI has been quietly extending its digital tentacles.  For some years, too, the power of AI has been harnessed in the field of artistic creation[1] and technological innovation.  For the IP lawyer, one of the most intriguing questions is this: can an invention made by an AI machine qualify for patent protection?  In a much anticipated judgment given in April 2022, the Federal Court of Australia gave a negative answer to the question.

Dr Thaler’s DABUS machine

In Commissioner of Patents v Thaler[2], Dr Thaler filed a patent application under the Patent Cooperation Treaty for an invention entitled “food container and devices and methods for attracting enhanced attention”.  He gave as the name of the inventor DABUS with the additional comment that “the invention was autonomously generated by an AI”.  Incidentally, DABUS is an acronym for “device for the autonomous bootstrapping of unified sentience”.  When the application entered the national phase, IP Australia rejected the application on the ground that it failed to identify a natural person as the inventor.

Under the relevant parts of s.15 of the Patents Act (Australia), a patent may only be granted to a person who is (a) the inventor; (b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or (c) derives title to the invention from the inventor or a person mentioned in paragraph (b).  In this case, Dr Thaler maintained, first of all, that nothing in the provision required that the inventor under paragraph (a) must be human.  Alternatively, he argued that if another person stole and sought to patent DABUS’ invention, he would be entitled (under paragraph (b)) to an assignment of the patent, including under the law of equitable confidentiality. Thirdly, since he was the owner of the copyright in the DABUS source code, under paragraph (c) he derived title to the invention from the inventor (i.e. DABUS), even though he himself was not the inventor, by analogy to the “doctrine of accession”.

Although Dr Thaler succeeded before the primary judge, the decision was overturned on appeal (Allsop CJ, Nicholas, Yates, Moshinsky and Burley JJ).  At the heart of the court’s reasoning was its opinion that the inventor under s.15(a) must be a natural person.  The assignment under s.15(b) must also come from the inventor, who must be a natural person, not a machine.  Finally under s.15(c) the person derived title to the invention from either the inventor of the person mentioned in paragraph (b), both of whom must be natural persons.

In arriving at this conclusion, the court traced the legislative history of the provision all the way back to the expression “true and first inventor” in the Statute of Monopolies 1624 and through successive Patents Acts.  The case law also strongly indicated that the entitlement to grant was premised on an invention arising from the mind of a natural person or persons.  As the court said, “The grant of a patent for an invention rewards their ingenuity.


The Federal Court’s decision is not entirely surprising.  I say so for two main reasons.  First, it came in the wake of a similar ruling of the English Court of Appeal (Arnold, Laing and Birss LJJ) in Thaler v Comptroller General of Patents Trade Marks and Designs[3]. The Court of Appeal was confronted with somewhat similar arguments, also advanced by Dr Thaler, based on the differently worded Patents Act 1977.  Fundamentally it overruled the contention that the inventor could be anything other than a person.  It further rejected Dr Thaler’s submission (by analogy with the doctrine of accession) that a new intangible thing produced by existing tangible property is the property of the owner of the tangible property.  It is notable however that while Birss LJ agreed with those legal propositions, he dissented from the majority on their practical or procedural consequences.  For Birss LJ, the Comptroller had no power to go behind a bona fide declaration by the applicant as to the identity of the inventor or the applicant’s statement as to how he claimed to have derived his title from that person.

There is another, somewhat disheartening, reason why the Federal Court’s decision is unlikely to generate much legal excitement.  It is clear that both the Australian court and the English court rooted their decision in a historical analysis of patent legislation.  It may come as a surprise to a layman that judges should look to the past to find an answer to a question thrown up by new technology that no one could have dreamt of in 1624.  Both courts were adamant that any contrary view would throw up further problems (such as who should be entitled to the patent) and must, in any event, be a matter for future reform.

However, the ingenuity of Dr Thaler’s invention lies not in his own spark of genius but that of his intellectual creation, namely, an AI machine whose capability in many ways exceeds that of its creator.  Should the owner or creator of the machine not be entitled to the fruit of its inventions?  If a system of reward for machine-generated innovations cannot be aligned with existing patent law, it is my view that serious consideration should be given to the creation of a sui generis right with clearly defined rules of, among other things, ownership and transmission.

For more about the Legal Tech Forum that DVC hosted in relation to New Technology and Changing Legal Ecosystems which preempted this issue and asked the question: Can a robot programmed in accordance with an algorithm (whether it be generated by a human or by the use of artificial intelligence) be an “author” in the context of intellectual property? (Consider this in the context of the first AI generated song Daddy’s Car and AI created art The Next Rembrandt)

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