An artificial intelligence system is capable of being named as an “inventor” of patentable subject matter, according to the Federal Court’s recent decision in Thaler v Commissioner of Patents.[1] Subject to any appeal, this decision has salient implications for the ways in which inventorship, ownership, and inventiveness might be assessed in Australia in the future.

Key takeaways

  • AI systems can be “inventors” for the purposes of the Patents Act 1990.
  • AI systems cannot be the owners of patents, but a patentee can, in certain circumstances, “derive” their entitlement to a patent from an AI “inventor”.
  • This differs from the position taken with respect to AI “inventors” in decisions in the UK, EU and US.
  • The decision also contrasts with the legislative requirements for human authors in other areas of intellectual property in Australia, such as copyright.
  • The decision may have implications for the way in which the entitlement and inventiveness of patentable subject matter are assessed in the future.

Click here to read our full analysis.


[1] Thaler v Commissioner of Patents [2021] FCA 879.

 

Shaun McVicar
Shaun McVicar
Partner, Melbourne
+61 3 9288 1587
Aaron Hayward
Aaron Hayward
Senior Associate, Sydney
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Tess Mierendorff
Tess Mierendorff
Senior Associate, Sydney
+61 2 9225 5596
Claire Dorse
Claire Dorse
Solicitor, Melbourne
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Sophie Yates
Sophie Yates
Solicitor, Sydney
+61 2 9322 4897