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  • The United Kingdom Supreme Court has upheld the deemed withdrawal of a patent application that listed an artificial intelligence system as the inventor.
  • The inventor of the artificial intelligence system commenced similar proceedings in Australia.
  • Although the UK decision is not binding on Australian courts, the issues raised by the Thaler litigation run deeper than mere technical issues and challenge our traditional understanding of fundamental legal concepts such as nature of personhood and property.

In Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (‘Thaler UK decision’), the UK Supreme Court upheld the deemed withdrawal of a patent application that listed an artificial intelligence (‘AI’) system as the inventor. The decision is the latest setback for Dr Steven Thaler, a computer scientist who has filed similar applications and commenced strategic litigation around the world.

Thaler’s Australian application was rejected by the Commissioner of Patents in 2021 and the rejection was upheld by the Full Federal Court of Australia in Commissioner of Patents v Thaler [2022] FCAFC 62 (‘Thaler 2022’). The High Court refused special leave to appeal, finding that the case was ‘not the appropriate vehicle’ to consider the issues of principle.

Although there are notable differences between the applicable UK and Australian legislation, the UK Supreme Court’s reasoning might nonetheless provide some helpful guidance if the High Court were to take up the issue of AI inventors in the future.

Background to the Thaler litigation

Thaler developed and owns an AI system, which has been described as a device for the autonomous bootstrapping of unified sentience, called ‘DABUS’. After a period of initial human training, DABUS was left to operate autonomously. As a result, DABUS created a new type of food container, the ‘Fractal Container’.

Thaler applied for patents for the container in several jurisdictions, including Australia and the UK. The applications were, in substance, the same. The applications named DABUS as the inventor, stated that Thaler was not the inventor, and asserted that Thaler had a right to a grant of the patent as the owner of DABUS. All the applications, with the exception of Thaler’s South African application, were rejected.

The Australian proceedings

In 2021, Thaler’s Australian patent application was refused by the Deputy Commissioner of Patents on the basis that only natural persons can be inventors for purposes of the Patents Act 1900 (Cth) ( ‘1990 Australian Act’) and Patents Regulations 1991 (Cth) (the ‘1991 Australian Regulations) (Stephen L Thaler [2021] APO 5). Thaler sought judicial review of the Commissioner’s decision.

On 30 July 2021, Beach J issued an opinion holding that an AI system could be an ‘inventor’ (Thaler v Commissioner of Patents [2021] FCA 879) (‘Thaler 2021’). However, the Full Court (Allsop CJ, Nicholas, Yates, Moshinsky and Burley JJ) reversed the decision in Thaler 2022 and the High Court refused special leave to appeal.

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