Who or What is Artificial Intelligence?

Eakin McCaffery Cox Australia

Who or What is the inventor?

In the case of Thaler v Commissioner of Patents [2021] FCA 879 the Federal Court of Australia [FCA] dealt witha discrete question of whether, for the purposes of the Patent Act 1990, a “computer” (as an exercise in artificialintelligence) can be the “inventor” required under patent act section 15 (one) and relevant regulations requiring aname on patent applications.

In short “The underlying question for… Determination is whether an “inventor” for the purposes of the Act and the Regulations can be an artificial intelligence system”.

Similar cases are being run in a number of other jurisdictions, with differing results so far.

FCA undertook a detailed statutory interpretation exercise and the detailed exposition of what “artificial intelligence” is and can do.

FCA adopted the view that unless the Patent Act demands it, “outmoded notions of the agent that may invent in the subject matter of a patentable invention are not controlling, and if the concept of “invention” is in terms of manner of manufacture evolves, as it must, why not the concept of “inventor”?””

FCA act accepted that the system used by Mr Thaler “could be described as self-organising as a cumulative result of algorithms collaboratively generating complexity. DABUS generates novel patterns of information rather than simply associating patterns. Further, it is capable of adapting to new scenarios without additional human input. Further, it is capable of adapting to new scenarios without additional human input. Further, the artificial intelligences software is self assembling. So, it is not just a human generated software program that then generates a spectrum of possible solutions to a problem combined with a filtering algorithm to optimise the outcome.”

FCA examined “ownership” for the purposes of Part 2 Chapter 2 of the Patent Act. “Inventor” is not relevantly defined in the legislation. However, “invention” is, as a method of manufacture. In a way which harks back to the Statute of Monopolies of 1608. That legislation was referred to by the High Court of Australia in the decision of D’Arcy v Myriad Genetics Inc and another [2015] HCA 35.

FCA concluded that the various statutory provisions did not exclude “an inventor from being a non-human artificial intelligence device or system

FCA drew a distinction between “applicant”, which has to be a legal person and “inventor” which it found did not.

In so finding the FCA very much relied upon an argument along the lines that in the absence of a prohibition in the legislation, then it is permissible.

FCA dismissed the relevance of ordinary dictionary definitions to the issue at hand as “problematic”. I have to wonder whether a higher court will not see that as a philosophical leap not simply a proper exercise of statutory interpretation.

Given other High Court of Australia case law on intellectual property issues [see D’Arcy v Myriad] there must be some doubt as to whether that argument will be supported by the High Court of Australia.

IP Australia has lodged an appeal and will be interesting to see the outcome.

My personal view is that in light of the reasoning used by the High Court of Australia in D’Arcy v Myriad Genetics Inc and another, where the court linked back to the meanings in the Statute of Monopolies still being relevant, I doubt the higher courts will adopt such a bullish interpretation as that adopted by the FCA.

If you have any queries, feel free to contact Greg Ross (  or your usual Eakin McCaffery Cox contact, a member of the Eakin McCaffery Cox Construction Team, email to or call (02) 9265 3000.

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