Dr Thaler’s efforts to have AI recognised as being capable of being an “inventor” for the purposes of the existing Australian patent regime has come to an end. On 11 November 2022, Australia’s highest court, the High Court of Australia, refused to grant special leave to appeal from the decision of the Full Court of Australia.
The refusal to grant special leave means that, at least until legislative change, in Australia, an ‘inventor’ listed in a PCT application must be a natural person.
We reported on the Full Federal Court’s decision (which Dr Thaler was seeking to appeal) here.
In short, the patent application filed by Dr Thaler was found to have lapsed because a human inventor was not nominated as an inventor for the purposes of regulation 3.2C(2)(aa) of the Patent Regulations. This regulation says that, in relation to a PCT application, an applicant must provide
“…the name of the inventor of the invention to which the application relates.”
Regarding the application, “[i]t is not to the point that Dr Thaler may have rights to the outputs of DABUS”, the Court said – “only a natural person can be an inventor for the purposes of the Patents Act and the Regulations.”
In the proceedings, it was never in dispute that the AI, known as DABUS, was the inventor of the inventions claimed in the patent application. It was not Dr Thaler: he was the applicant but not the inventor.
Consequently, the special leave question was narrow – was the Commissioner entitled, merely by the appearance of the name of a non-natural person as the inventor, to reject the application?
The High Court (based on the transcript) seemed interested in questions regarding inventorship more generally, such as:
However, in view of the narrow special leave question, the High Court bench (comprising Gordon, Edelman and Gleeson JJ) ultimately rejected Dr Thaler’s application. This was on the basis that this case is “not the appropriate vehicle to consider the question of principle sought to be agitated” by Dr Thaler.
Meanwhile back in the UK, we now know that the Supreme Court is going to hear the DABUS appeal in March 2023. (See our latest article here). Watch this space!