On 9 February 2022, the appeal by the Commissioner of Patents against the decision of Justice Beach finding that the ‘AI’ machine known as DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) could be named as inventor on a patent application filed by Dr Stephen Thaler, was heard before an expanded Full Bench of the Federal Court of Australia. The five-judge panel comprised Chief Justice Allsop, and Justices Nicholas, Yates, Moshinsky and Burley. The appointment of an expanded panel (three judges is usual), including the Chief Justice, is notable, and suggests that the court considers the question of whether a machine can be an inventor for the purposes of the Patents Act 1990 to be one of particular legal importance. The case was argued for Dr Thaler by David Shavin QC (who also appeared at first instance), and for the Commissioner of Patents by Sophie Goddard SC (appearing for the first time in this matter). Hamish Bevan (who represented the Commissioner at first instance) argued the Commissioner’s case in reply. The proceedings were conducted via video conference, and I observed online.
I think that it is fair to say that Dr Thaler did not experience such a smooth ride on appeal as he did at first instance. Where Justice Beach seemed positively enthusiastic about the idea of allowing patent applications to be filed, and patents granted, for inventions autonomously devised by machines, the judges on the Full Bench appeared sceptical of a number of the arguments presented on behalf of Dr Thaler, and at times subjected Mr Shavin to fairly sharp questioning and criticism. There are some aspects of the original decision that are unlikely to survive the appeal, although Dr Thaler only requires one line of reasoning to stand in order to prevail.
Based on the arguments presented, there are a number of sub-questions that the Full Court may need to decide. First, there is a question of whether the case is simply about determining the meaning of the word ‘inventor’ as a matter of pure statutory construction, or about deciding whether or not to develop the concept of the inventor according to a common law methodology. Either way, the court then needs to decide whether or not a non-human, machine inventor should be included. In doing so, it may need to consider whether non-human inventors are compatible with other provisions of the Act, and in particular with the section that deals with the entitlement to be granted a patent. A machine cannot possess or assign intellectual property rights, so provisions that most naturally apply to transfers of title between (natural or legal) persons may not necessarily be compatible with ‘AI’ inventors. Justice Beach found that two different mechanisms specified in the legislation could apply to enable Dr Thaler to claim ownership of patent rights on inventions made by DABUS. He will need at least one of these to survive the appeal.
There are a number of avenues by which the Commissioner could succeed in her appeal, but by the same token there are multiple opportunities for Dr Thaler’s defence of the appeal to be successful. It is difficult to predict which lines of reasoning the court may adopt, and indeed it is not unlikely that the judges will hand down multiple concurring and/or dissenting opinions. On balance, my sense is that the appeal is more likely than not to succeed – perhaps by a majority rather than unanimous judgment. If so, then Australia will rejoin the many other jurisdictions in which corresponding applications naming DABUS as inventor have been rejected.
The remainder of this article provides a summary of the major arguments presented at the hearing. It is somewhat lengthy, but considerably less so than the full day spent at the Federal Court!
