Posted: 24 May 2022
Katarina Klaric, Principal, Stephens Lawyers & Consultants
Artificial intelligence (AI) and automated decision-making technology is being deployed by government and business to automate or improve operational capabilities. AI technology or systems also are increasingly being used in the inventive or creative process to generate inventions and literary, artistic, musical and dramatic works without direct human involvement.
Can AI generated inventions be the subject of Patent Protection in Australia?
In Australia, AI generated inventions will not be eligible for patent protection in Australia, unless human inventorship can be established. The Australian courts are still to consider the question of whether ownership of the source code and computers of the AI system which generates the output the subject of the invention, including the operation and maintenance of the AI system, is sufficient human input to constitute inventorship for patent protection.
Commissioner of Patents v Thaler[i]
The recent appeal court decision of the Federal Court of Australia, Commissioner of Patents v Thaler illustrates how the existing patent laws are being challenged by AI technology. AI generated inventions will not be eligible for patent protection where the named inventor is not a human.
In that case, Dr Thaler, the owner of the AI system known as DABUS claimed the output of the DABUS system as an invention and named DABUS as the inventor on the patent application. Dr Thaler owned the copyright in the DABUS source code, the computers upon which DABUS operated and was responsible for the maintenance and cost of the DABUS system and computers.
The trial judge had ruled that the DABUS system could be named as an inventor on the patent application. This ruling was overturned by the appeal court which held that under the Australian Patents Act 1990 (Cth) and Patents Regulations, the inventor named on a patent application had to be a “natural person” to be entitled to a grant of a patent. As a result, Dr Thaler was not entitled to patent protection for the AI generated invention, although he owned the DABUS system that generated the invention[ii].
The court confirmed that a product or process the subject of the invention had to be brought about by some “human action”. This approach accorded with legislative history – “origin of entitlement to the grant of patent lies in human endeavour, which is rewarded by the grant of a limited term monopoly.“[iii]
The court did not accept the proposition that if DABUS is not accepted as the inventor, no invention devised by an artificial intelligence system is capable of being granted a patent. The court left open the question of whether the ownership of copyright in source code and computers on which the AI system operates and its maintenance and operation is sufficient human contribution for inventorship where the claimed invention is AI generated.
Can AI generated Works be the subject of Copyright Protection in Australia?[iv]
Businesses or individual using AI computer systems or technology to generate literary works, such as reports, directories or other compilations, databases, computer software, digital images, designs or plans or artistic, musical or dramatic works are at risk of not having copyright protection.
In Australia, such works will not be protected by copyright where they are AI computer generated and the party claiming copyright is unable to establish that the works originate from a human author or authors exercising sufficient skill and judgement or intellectual effort in the creation or production of the works.
Unlike the United Kingdom, Australia has not amended its Copyright Act to provide specific copyright protection to computer generated works. Under section 9, Copyright, Designs and Patents Act 1988(UK), the author of computer generated literary, dramatic, musical and artistic works is taken to be the person by whom the arrangements necessary for the creation of the work was undertaken.
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