IP Australia appeals seminal AI inventorship ruling
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

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

IP Australia appeals seminal AI inventorship ruling

adobestock-272742878.jpeg

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

Partners and other senior leaders must step up if they want diverse talent at their firms to thrive
European and US counsel reveal why they are (or aren't) concerned about patent quality and explain how external counsel can help
Firms such as Bird & Bird and Taylor Wessing have reported rising profits and highlighted the role of high-profile IP disputes and hires
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers in the corporate and IP practices discuss where the firm can steal a march on competitors, its growth plans in London, and why deal lawyers are ‘concertmasters’
Kathleen Gaynor, DEI specialist at Phillips Ormonde Fitzpatrick, says deliberate actions can help law firms reach diversity goals
Scott McKeown, who moved to Wolf Greenfield one year ago, says the change has helped him tap into life sciences work and advise more patent owners
The winners of our Asia-Pacific Awards 2024 will be revealed during a ceremony in Malaysia on September 26
Zach Piccolomini of Wolf Greenfield explains how to maximise your IP portfolio’s value while keeping an eye on competitors
Witnesses at a Congressional hearing debated whether reforming the ITC is necessary and considered what any changes should look like
Gift this article