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The Federal Court of Australia set an unconventional precedent by concluding DABUS can be an inventor of a patent.¹ DABUS, or the “Device for the Autonomous Bootstrapping of Unified Sentience,” is an artificially intelligent machine claimed to have invented a “Food Container and Devices and Methods for Attracting Enhanced Attention.”²

In nearly every other Governmental Patent Office, DABUS, or more broadly, artificial intelligence, is ineligible to be named as an inventor on a patent. For example, in the United States, the U.S. Patent and Trademark Office’s opinion is; “ . . . interpreting ‘inventor’ broadly to encompass machines would contradict the plain reading of the patent statues that refer to (natural) persons and individuals.”³ The European Union’s Patent Office believes, “The EPC (European Patent Convention) does not provide for non-persons, i.e. neither natural nor legal persons, as applicant, inventor or in any other role in the patent grant proceedings. In the context of inventorship, reference is made only to natural persons.” ⁴ The United Kingdom’s Patent Office also holds a similar view to the European Unions’. ⁵

Therefore, The Federal Court of Australia’s conclusion, “(a)n inventor as recognized under the (Patents) Act can be an artificial intelligence system or device(,)”⁶ is sure to change the patent landscape.

Be that as it may, DABUS has not yet been named an inventor of a patent in Australia yet. However, The Federal Court of Australia has ordered: “(t)he matter as to whether patent application no. 2019363177 satisfies the formalities under the Patents Regulations 1991 (Cth) and its examination be remitted to the Deputy Commissioner to be determined according to law in accordance with these reasons.”⁷

Consequently, Australian Patent Application No. 2019363177 is an Application to follow closely.

¹ See Thaler v. Commissioner of Patents (2021) FCA 879 (30 July 2021) (Austl.).

² See WO 2020/079499 A1  

³ Devices and Methods for Attracting Enhanced Attention, decision of the Deputy Commissioner for Patent Examination Policy, Application No. 16/524,350, Decision on Petition, Page 4 (citing 35 U.S.C § 115).

⁴ Grounds for the EPO Decision of 27 January 2020 on EP 18 275 174, PK23498.

⁵ See Thaler v. The Comptroller-General of Patents, Designs And Trademarks [2020] EWHC 2412 (Pat).

⁶ Thaler v. Commissioner of Patents (2021) FCA 879 at ¶ 222 (30 July 2021) (Austl.).

⁷ Id. at 1.

Apple recently avoided a significant damages payout by successfully proving that its opponent, Personalized Media Communications, LLC (“PMC”), had inentionally and unfairly delayed issuance of its patents by decades, until a significant portion of the industry had adopted its technology. Due to this, the Court ruled that PMC’s patents are unenforceable.

Among other patents, PMC sued on U.S. Patent No. 7,775,264 for signal processing methods related to the delivery of content over computer networks. The patent was filed in May of 1995, issued in 2010, but includes technology dating back to the early 80’s. The strategy of delaying the issuance of patents was apparently discovered in an internal document from 1991 citing Apple, Intel, IBM, and Microsoft as potential targets. 

Of course, such a strategy is no longer possible to pursue today. After June 8, 1995, the term of a U.S. patent is set at twenty years from its earliest filing date. Therefore, there is no benefit to delaying issuance of a patent. When PMC filed its applications, however, the term was set at seventeen years from the grant date of the patent. 

 Intel Corp., International Business Machines Corp. and Microsoft Corp.