IP Australia appeals seminal AI inventorship ruling
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

IP Australia appeals seminal AI inventorship ruling


Australia's commissioner of patents has filed an appeal against a decision to recognise an artificial intelligence tool as an inventor

The commissioner of patents in Australia has filed an appeal against a decision from the country’s Federal Court that recognised an artificial intelligence tool called DABUS as an inventor on a patent, it was announced today, August 30.

The appeal in Thaler v Commissioner of Patents was filed on Friday, August 27, in the Victoria Registry of the Federal Court of Australia and will soon be decided by the full court.

In a news release, IP Australia said: “The appeal is centered on questions of law and the interpretation of the patents legislation as it currently stands.

“The commissioner considers that the legislation is incompatible with permitting an AI to be an inventor, and that the issue is one of public importance.”

The office also stressed that the appeal did not represent a policy position from the Australian government on whether AI should or could ever be considered to be an inventor on a patent application.

The Australian patent for DABUS – which stands for Device for the Autonomous Bootstrapping of Unified Sentience – is just one of many similar applications that have been filed worldwide, some of which have already been rejected in the UK, the US and at the EPO.

Australia was the first country to judicially recognise AI inventorship on July 30 2021, two days after South Africa became the first country to issue a patent designating an AI tool as an inventor.

Justice Jonathan Beach, who handed down the judgment, had based his decision on the reasoning that the word “inventor”, an agent noun, was not defined in the Patents Act or the Patents Regulations.

Accordingly, he found, if an AI system was the agent that invented, it could be described as an inventor.

The appeal is likely to shed some light on the legislative intent behind the term inventor included in the Patents Act as well as on whether inventive step is of concern while determining AI inventorship.

Counsel will no doubt be interested to find out whether the Federal Court’s decision, which has been lauded as forward-looking, will hold water before the full court.

more from across site and ros bottom lb

More from across our site

External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Gift this article