Tech & Sourcing @ Morgan Lewis


In 2021, the Australian Federal Court ruled in a landmark case that a device characterized as an artificial intelligence (AI) machine could for the first time be listed as an inventor on a patent application for the purposes of the Australian Patents Act 1990 (the Act). 

The ruling related to an AI system known as DABUS developed by Dr. Stephen Thaler. Dr. Thaler filed patent applications naming DABUS as the inventor of two inventions, and the Australian Federal Court ruled that, although DABUS was not a natural person, it could be listed as the inventor.

Dr. Thaler has also previously made claims to numerous courts of Germany, New Zealand, the United States, and the United Kingdom arguing that DABUS should be listed as the inventor, with each of those courts deciding that only natural persons can be named as inventors and, as such, DABUS could not. A similar claim is expected to be raised in South Africa, the outcome of which is eagerly awaited.

On appeal of the 2021 decision, a five-judge bench of the Australian Full Federal Court unanimously reversed that decision, finding that an inventor must be a natural person for the purposes of the Act. This latest development represents a significant milestone in the legal debate that judiciaries across the world are currently contending with.

This latest ruling brings Australia back into stride with the judicial rulings in Germany, New Zealand, the United States, and the United Kingdom. 

In reaching its decision, the Australian Full Federal Court noted that although the word “inventor” was not defined under the Act, its interpretation should follow the ordinary English meaning—i.e., “the person who makes or devises the process or product.” In addition, “the law relating to the entitlement of a person to the grant of a patent is premised upon an invention for the purposes of the Act arising from the mind of a natural person or persons. Those who contribute to, or supply, the inventive concept are entitled to the grant. The grant of a patent for an invention rewards their ingenuity.”

The judgment was clear that, having regard to the “statutory language, structure and history of the Patents Act, and the policy objectives underlying the legislative scheme,” it was not possible for AI to be an inventor.

Given that Dr. Thaler had appealed to higher courts in other jurisdictions, it is likely that he will appeal to the Australian High Court. In the meantime, it is clear that legislative change is needed to keep pace with technological development, particularly in the field of AI.

Trainee solicitor Chidi Ogbuagu contributed to this post.