One small step for ‘artificial intelligence’ and a giant leap for the Australian patent system? The Federal Court decision in Thaler v Commissioner of Patents
Adam Liberman · Journal of Intellectual Property Law & Practice · 2021
Thaler, the applicant in relation to patent application no. 2019363177, named an artificial intelligence system—referred to as DABUS1—as the inventor of the subject invention. The application was a PCT application. S29A(5)(a) Patents Act (Cth) 1990 (‘the Act’) obliges an applicant of a PCT application to ‘file the prescribed documents and pay the prescribed fees’.2 Reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth) (‘the Regulations’) relating to the formalities for a PCT application requires that the ‘applicant must provide the name of the inventor of the invention to which the application relates’. The Deputy Commissioner took the view that both s15(1) of the Act—dealing with who is entitled to be granted a patent—and Reg 3.2C(2)(aa) were inconsistent with an artificial intelligence system being named as the inventor. Thaler, as the applicant in the Federal Court, sought judicial review of these decisions under s5(1) of the...