An Unusual Inventor - Australian Federal Court Gives Green Light for AI Inventors of Patents

Having spoken about whether artificial intelligence could be deemed to be an inventor was something that was discussed on this blog over a year ago, with both the UK, the US and the EU, currently, not allowing for AI to be considered as an 'inventor' and therefore any inventions created by the AI would not be patentable. While this position seems to remain in those jurisdiction, an interesting development has emerged in Australia which seems to go counter to what the above jurisdictions have decided. 

The case Thaler v Commissioner of Patents concerned a patent application for a patent by Stephen Thaler (application VID108/2021) for a patent for two inventions, created by DABUS (Mr Thaler's AI system), for an improved beverage container and a flashing beacon to be used for emergencies. The case focused on whether the AI system could be an inventor under the Patents Act 1990. The Deputy Commissioner of Patents initially rejected the application as, in their view, the application didn't comply with specific requirements and that under s. 15 of the Patents Act an AI could not be treated as an inventor. Mr Thaler then sought a judicial review of the decision, which ended up in the Federal Court.

The Court first discussed the issue generally, noting that: (i) there is no specific provision in the Patents Act that expressly refutes the proposition that an artificial intelligence system can be an inventor; (ii) there is no specific aspect of patent law, unlike copyright law involving the requirement for a human author or the existence of moral rights, that would drive a construction of the Act as excluding non-human inventors; (iii) the word "inventor" has not been expressly defined and under its ordinary meaning it can include any 'agent' which invents, including AI; (iv) the definition of an "inventor" can be seen to potentially evolve and change with the times, potentially to include non-human authors; and (v) the object of the Act is to promote the economic wellbeing of the country, which should inform the construction of the Act. 

To include AI as an inventor would, according to the Court, help in promoting innovation and the promotion of economic wellbeing in Australia. But the problem of who the ultimate legal owner of the rights still remains. This would indeed promote the objective of s. 2A of the Act, which sets out the object of the Act as discussed above. 

The Court highlighted the need for a human applicant, on behalf of the AI system, for any inventions that these systems might come up with, who would then also have the rights to any patents granted for that AI system. 

The Court also discussed the notion of the "inventive step" under s. 18 of the Act, which is a legal requirement for patentability. Both s. 18 and 7, which elaborates more on the meaning of the "inventive step", don't require an inventor per say, nor that such an inventor, if even required, would be legal person. The Court concluded that, for there to be an inventive step, a legal person isn't required as the inventor at all, even though the Act does refer to "mental acts" and "thoughts".

The Court then moved onto discussing the various dictionary definitions for what an "inventor" is. This was quickly dismissed as a grounds to limiting inventors to legal persons, as the Court noted that the definitions, as set out, have moved on from the historical meanings given to them and can't be limited in the same way. 

The next issue was who the patent would be granted to under s. 15 of the Act (but focusing on still who could be classed as an "inventor"). The section includes four different classes of person to whom a patent can be granted. 

The first is if the inventor is a person. The Court quickly determined that, as DABUS is not a person that the section won't apply in this instance, but also discussed that this does not demonstrate that the concept of a "person" would be different to that of an "inventor". An AI system could indeed be the inventor, but not able to be granted a patent as they don't fulfill the requirements of s. 15. 

The second one is a person who would, on the grant of a patent for the invention, be entitled to have the patent assigned to them. This will be discussed in more detail following the other classes. 

The third one is a person who derives title to the invention from the inventor or a person mentioned in the second class. Again, this will be discussed further in the context of the second class. 

Finally, the fourth one is a person who is the legal representative of a deceased person in one of the earlier named classes, which, unsurprisingly, the Court determined to not apply here.

Returning to the question of the second and third classes, the Court first highlighted that Mr Thaler could indeed fall under the second class as the programmer and operator of DABUS, through which he could acquire title in any inventions that may be granted patents over. The title in the patent flows through to Mr Thaler automatically, so wouldn't require the assignment of any rights by the inventor (here DABUS) to Mr Thaler. Additionally, the Court determined that s. 15 doesn't require an inventor at all, but only requires that an applicant is entitled to have a patent assigned to them. 

Also, Mr Thaler, according to the Court, would fall under the third class as he, on the face of it, he has derived title to the invention from DABUS. As the AI system cannot legally assign any inventions to Mr Thaler, however, the language of s. 15 does allow for one to derive rights in an invention even outside of legal assignment of those rights. All of Mr Thaler's rights in any invention become his by virtue of his ownership and operation of the inventor, DABUS. 

The Court succinctly summarised the matter as "generally, on a fair reading of ss. 15(1)(b) and 15(1)(c), a patent can be granted to a legal person for an invention with an artificial intelligence system or device as the inventor".

Ultimately what the case focused on is whether a valid patent application has been made, rather than who will own any patent that might be granted in the future. 

What the Court determined was that "...an inventor as recognised under the Act can be an artificial intelligence system or device. But such a non-human inventor can neither be an applicant for a patent nor a grantee of a patent". This still leaves the ownership of a patent in the air, but, focusing on what was discussed by the Court, it is more than likely that ownership in any AI inventions would automatically pass to the owner and operator of that AI system. 

The Australian Court's approach to this question has hugely departed from the viewpoints of that of the US, UK and the EU, where AI systems have been rejected as potential inventors. It will be very interesting to see the law change and evolve in this in the years to come, in particular any decisions on the granting of a patent to the owner of an AI system, but so far at least Australia seems to be on the vanguard of allowing for AI systems to potentially push the envelope on innovation and to protect those innovations in the process. 

Genetic Patents Saga Continues - Next Stop, Canada

After the Myriad Genetics saga has been experienced on both sides of the world, in the US and Australia (both discussed on this very blog quite extensively: US here and here; Australia here), the fight seemed to be over and the decision, at least for now, settled. With the Australian case having been appealed to the High Court of Australia, most IP practitioners and academics awaited the conclusion of the patent's road in Australia, a new challenge in the field of genetic patents has begun in the colder of the North American powerhouses; Canada. The Myriad Genetics patents have not been challenged in Canada, although the Provinces themselves have rejected them and refuse to enforce the patents, and this case would be an important stepping stone in completely answering the question of the patentability of genetic material, at least in North America.

The challenge is being mounted by Children's Hospital of Eastern Ontario (more commonly known as CHEO), however taking the fight to (finally) someone else but Myriad Genetics. The question relates to patents covering the testing and/or assessment of Long QT Syndrome, which, as explained by the Mayo Clinic: "...is a heart rhythm disorder that can potentially cause fast, chaotic heartbeats. These rapid heartbeats may trigger a sudden fainting spell or seizure. In some cases, your heart may beat erratically for so long that it can cause sudden death". One does not catch Long QT, as it is a genetic disorder, which requires identification prior to treatment. CHEO were prevented from conducting their own genetic analyses on-site, as the University of Utah holds the patents for the testing of this genetic disorder, much akin to the Myriad Genetic Patent (Canadian patents 2240737, 2336236, 2337491, 2369812 and 2416545 respectively). Due to the mandatory outside testing at the University of Utah, CHEO's costs to diagnose this disorder are nearly double when compared to internal testing, resulting in increased costs and potentially even diagnosis times; again, very similar to the problems with the Myriad Genetics case.

The Canadian Patent Act reflects the US legislation quite heavily in relation to patentable subject matter. Under section 2 of the Canadian Patents Act an 'invention' is defined as "...any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter". A nearly identical definition is set out in 35 USC section 101 in the United States. The relevance of this is very important, as the Supreme Court's rejection of genetic patents in the US will undoubtedly influence the Canadian courts going forward.

Even genes have it tough under today's beauty standards (Source: Dan Collins)

Under the Canadian Patents Act section 27 both scientific methods and abstract theorems are not patentable, although an application of such can potentially be patented. One has to note the omission of an express exclusion of naturally occurring subject matter, which is included in many other jurisdictions. The argument raised by CHEO therefore hangs on whether a naturally occurring phenomena can be patented under section 2, if it is deemed to be a sufficiently marked departure from the naturally occurring thing itself. One has to wonder why the Canadian legislature has left this exclusion out of the law, as it is very much the standard all over the common law.

As for potentially applicable case law the pickings are quite slim. The case of Harvard College v Canada (Commissioner of Patents), the Canadian Supreme Court saw that, even though section 2 is very broad in its wording, it does not include "....anything under the sun that is made by man", and can be therefore limited in its scope. The Harvard case effectively dismissed the patentability of 'higher lifeforms', which has been argued to encompass plants as well as animals, such as the genetically modified mice in question in the case itself, it still remains a useful examination of some of the wording the Federal Court will face. Whether one can include genes in the term 'higher lifeforms' remains to be seen, and in this writer's opinion, it will be a tough argument to press, but a possible one due to the complexity and higher level of function which genes serve in the human body. In Monsanto Canada Inc. v Schmeiser the Supreme Court looked at patents relating to genetically modified crops. The case largely focused on infringement, rather than the patentability of genetically modified crops, but as the Supreme Court did briefly bring the fact to light, it still might be used as a starting point to defend the patentability of other genes; even human genes.

This writer for one will await the emergence of this case in the courts, and wonders if the decision will be different to that of the US Supreme Court. Arguably the Canadian courts should hold that patents are not eligible for patent protection; however, as recently seen in the Full Federal Court of Australia as mentioned above, things are not always as straightforward as you might think. Yet, due to the sheer similarities of the Canadian and US law, and the significant influence of its North American brethren in the South, one can imagine things going CHEO's way on this one. As the case was filed in the very early parts of November a judgment will be a long ways away, but this will be one to look forward to in 2015.

Source: Ars Technica

Retrospective - What is an Invention? An Early Australian Perspective

When considering the humongous advances through invention humanity has undergone in its existence in this world, starting from the primitive inventions such as the ability to control fire to more modern marvels such as the Internet, one cannot be nothing but at awe with the collective capabilities of humans. Inventions themselves can cover almost anything when thinking in laymen's terms, but what amounts to an invention under law? In Australia this is judged based on the NRDC case, which has been discussed on this blog prior; however a case nearly 50 years earlier set the stage for NRDC which is often overlooked.

The case in question is Rogers v Commissioner of Patents, decided in 1910 by the High Court of Australia. The invention being dealt with in the case was a device or a contraption designed to burn down standing timber, causing only a segment of the bottom to burn, thus felling the tree once burned sufficiently. The device used kept the burning piece of wood used to burn down the tree in constant contact with the tree through a tripod of sorts (two forked pieces of wood) which rested the burning piece of wood against the base of the tree at an angle. Due to this the smaller burning piece of wood would fall towards the base of the tree as it was heavier, keeping it in constant contact with it as desired. 

Much like the aforementioned NRDC case the question at hand for the High Court of Australia was whether this device would fall under the 'manner of manufacture' requirement in the Statute of Monopolies 1623. Chief Justice Griffith contemplated the phrase's meaning in the majority decision, seeing that the word 'manufacture' can apply both to the product itself or the manner in which it is produced. He further distinguished that mere new ideas themselves will not be sufficient to be patentable, drawing from the case of Harwood v Great Northern Railway Co: "...you cannot have a patent for a well-known mechanical contrivance merely when it is applied in a manner or to a purpose, which is not quite the same, but is analogous to the mariner or the purpose in or to which it has been hitherto notoriously used". His Honor clearly refers to the use of the two forked sticks in the device in question as to whether they would fall under such a definition. In further explaining his position, his Honor referred to the case of Lane Fox v Kensington and Knightsbridge Electric Lighting Co: "A patentee must do something more; he must make some addition, not only to knowledge, but to previously known inventions, and must so use his knowledge and ingenuity as to produce either a new and useful thing or result, or a new and useful method of producing an old thing or result".

Joseph was confused as to how to use the device

As said above, the use of a very primitive device, clearly already known, would be hard-pressed to fall under the definition of a manner of manufacture under his Honor's considerations. His Honor does go into more detail applying the aforementioned precedents in the patentability of new ideas: "There may... in some circumstances be a patentable invention if the discovery involves novelty in the use of a known thing as distinguished from novelty of purpose or if any new modification of the thing or any new appliance is necessary for using it for the new purpose". In his mind a tripod, as the two sticks served as, did not fall under this doctrine, as the device was not a modification of the conventional tripod nor was there a new appliance; the sticks merely served as a tripod even under the new use. His Honor dismissed the appeal on these grounds.

Justice Isaacs showed a different approach, giving a dissenting opinion. In his Honor's mind new uses for old apparatuses could attract patentability, quoting a number of cases, the more illustrative of which is the House of Lords decision of Patterson v Gas Light and Coke Co: "...if by reason of knowing the theory he [the appellant] is enabled to make some improvements he may take out a patent for those improvements, but he cannot take out a patent to prevent others using what they had used before, though only empirically". In his Honor's mind the use of the tripods in this manner would be patentable.

As one can see the old views of what can be considered an invention, or a manner of manufacture, showcase themselves to be incredibly archaic, although still very useful in further considerations. Rogers v Commissioner of Patents was used extensively in NRDC, and therefore merits discussion, but it's application in today's patent law can be said to be minimal at best. Regardless, this case is still overlooked, and does give more insight to the origins of modern patent laws and their application.