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AI Inventor Recognised by South Africa and Australia

3 August 2021

We have previously reported (US, Europe, and UK) on the unsuccessful attempts by the University of Sussex and Dr Thaler to have his AI machine “DABUS” recognised as an inventor by patent offices around the world. Although those decisions are under appeal, the overwhelming approach of patent offices to this concept has, so far, been extremely negative.

Last week saw a few rays of potential sunshine for the DABUS team. Firstly there was a somewhat over-hyped acceptance of the application in South Africa. Despite the inevitable publicity that was made about this being a “first” and a “success” for the DABUS team, this was an unsurprising development. South Africa does not further examine patent applications which originate from PCT applications and so the grant of the DABUS application was effectively a “rubber-stamp” exercise once the DABUS team had filled in the forms correctly, and did not involve the exercise of any decision-making in permitting the naming of a machine as the inventor.

More significantly, on 30 July the Federal Court of Australia delivered a judgment which legally recognised DABUS as a valid inventor, following an appeal of the negative decision of IP Australia on the issue earlier this year. This was indeed a landmark as it is the first legally-reasoned decision to reach this conclusion.

Despite being lengthy, the decision from the Federal Court was issued rapidly only four weeks after the hearing on the matter. Largely it agrees with arguments that the DABUS team have submitted (without success) in the other jurisdictions discussed previously, namely that the term “inventor” is not limited to natural persons (this being the main deviation from the decisions elsewhere) and there is nothing else in the Australian Patents Act which prevents a machine being named as an inventor.

Students of linguistics may debate the judge’s analysis of “inventor” and his rejection of dictionaries as “old millennium”. However, despite its length, the judgment appears to skim over the more fundamental issue that arises out of the conclusion that a machine is capable of being an inventor, which is who is entitled to own the property (such as a patent or application) arising from that invention. The judge appears to accept that a machine could not be the owner, controller or patentee, but rather glosses over how a machine inventor might acquire, let alone transfer that title to another (in this case Dr Thaler). Indeed, despite several paragraphs skirting around this issue, the judge concludes that the determination as to who should be granted a patent is not an issue that needs to be decided at this point as the grant of any patent is “some years away”.

The decision in Australia can be appealed by the Commissioner, although it is not clear yet whether an appeal will be filed. However, it seems unlikely that the Australian decision will significantly affect the outcome of appeals in other countries where the key question of whether the word “inventor” requires a natural person has already been reached.

For further information or should you have any queries, please contact Stephen Hodsdon or your usual J A Kemp adviser.

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