machine being treated as an inventor.

In this case, since it was not possible
to identify a person who can be
granted a patent, the application failed
to meet filing formalities. As this
deficiency was not capable of being
corrected, the application lapsed.

Accordingly, it appears that a patent
application naming an AI machine
as an inventor cannot be validly filed
in Australia, principally because
there is currently no mechanism for
a nominated person to derive title
to the invention.

While specific legislation regarding
inventorship varies in different
jurisdictions, related overseas
applications naming DABUS
as the inventor have received
similar outcomes.

In January 2020, the European
Patent Office refused two patent
applications on the grounds that the
applications listed the AI machine
DABUS as the inventor and not a
‘natural person’, and that designating
a machine inventor with a name
‘does not satisfy the requirements
of the European Patent Convention.’
Similarly, in July 2020, the UK High
Court upheld a 2019 UK Intellectual
Property Office decision stating that
an inventor can only be a ‘natural
person’, and not a machine. The UK
High Court and EPO each found that
an AI machine could hold no rights,
and could not transfer any rights to
an applicant as successor in title.

In February 2020, the US Patent
and Trademarks Office issued a
decision denying a petition to vacate
a Notice to File Missing Parts.

The Notice indicated that the
application did not ‘identify each
inventor by his or her legal name’.

The USPTO rejected the notion that
an inventor could be construed
to cover machines, referring to
dictionary definitions and case law
indicating that an inventor must be a
natural person, and that the inventor
who executes an oath or declaration
must be a ‘person.’
Dr Thaler has appealed the decisions
in the UK, EPO, and the Federal
Court of Australia.

So, what do an AI machine like
DABUS and a monkey have in
common? In the monkey selfie
copyright dispute, it was found that
the monkey was unable to hold
copyright in a selfie picture because
it was a non-human creator. Just like
that monkey, DABUS is unable to be
named as an inventor because it is
not a natural person.

It seems that without legislative
reform, it will be difficult to obtain
patent protection for an invention
devised solely by an AI machine.

It has been argued that this is not
necessarily a bad outcome, as
allowing patent applications to be
filed for inventions generated by
AI machines may stifle rather than
promote innovation. In any event,
the question of inventorship may
not be the only hurdle to protection
for AI devised inventions. Of course,
there is also the question of whether
an invention devised by an AI
machine during normal operation –
e.g. executing an iterative process
to determine optimum design
features of a product would be
obvious. Perhaps this will be the
next question.

Inspire March 2021
5 Helen McFadzean | Senior Associate
BE(Hons) Mechatronics MIP FIPTA
helen.mcfadzean@pof.com.au