Welcome
Australia’s IP legislation includes many provisions, which while important,
do not regularly receive consideration by our Courts, leaving their potential
scope uncertain. Recent decisions regarding ‘who can be an inventor’,
and what constitutes ‘fair dealing’ with a copyright work, provide valuable
insight into the application of some underexplored areas of our law.

Inspire September 2021
In this edition of Inspire, Helen
McFadzean examines the ongoing
controversy over whether an
Artificial Intelligence machine can
be nominated as the inventor for
a patent application. As Helen
notes, the recent decision in Thaler
v Commissioner of Patents would
seem to put the scope of who may
be an inventor for a patent at odds
with the position of who may be an
author for copyright, or a designer for
a design registration. Interestingly,
the case also hints at how the
recently introduced objects clause
may play an increasing role in the
interpretation of the Patents Act
Rather than a general ‘fair use’
defence, Australian copyright law
provides a number of specific
defences which apply where a work
is used for a particular purpose and
in a manner which constitutes
‘fair dealing’. As Ye Rin Yoo explains,
although the application of the
defence is very fact specific, the
decision in AGL Energy v Greenpeace
provides some important guidance
on the factors which a Court may
considered in deciding whether
a particular dealing is fair.

While Australian patent law includes
specific grace periods to allow
for public working of an invention
for the purpose of reasonable trial
prior to filing a patent application,
as Greg Bartlett discusses, there
are important limitations to these
provisions. The decision in Fuchs
Lubricants v Quaker Chemical
illustrates that disclosures which
are ancillary to a public trial may
not be covered by the grace
period, and should be avoided
or made only subject to suitable
confidentiality arrangements.

Also in the edition, Mark Williams
looks at the application of the
manner of manufacture test to
blockchain related technology,
Leigh Guerin explores the
patentability of diagnostic methods,
Annabella Newton looks at changes
to patent term extension laws and
we say congratulations to Jacqueline
Leong on her recent promotion.

Adrian Crooks | Principal
BEng(Civil)(Hons) LLB LLM FIPTA
adrian.crooks@pof.com.au Congratulations to
our new Senior Associate
Jacqueline Leong
We are pleased to
announce the promotion
of Jacqueline Leong
to the position of
Senior Associate.

2 This promotion is a
significant milestone
that recognises
Jacqueline’s exceptional
work, client service,
and leadership.

Prior to working at POF, Jacqueline
worked as a trade mark solicitor in
the intellectual property department
of one of Malaysia’s top-ranked
law firms where she managed
and prosecuted large trade mark
portfolios for many well-known
global companies, assisted in
court actions and participated in
anti-counterfeiting activities with
local law enforcement agencies
and private investigators.

Jacqueline has assisted both local
and international clients with
their trade marks, specialising
in the protection, enforcement
and defence of trade marks
in Australia and overseas.

“Jacqueline has been
with us for over two
years, and is a highly-
valued member of our
Adelaide office and our trade
marks team. She also makes
a significant contribution to
our Trade Marks Committee,
Health & Wellbeing Committee,
and Diversity & Inclusion
Subcommittee. This promotion
is a reflection of Jacqueline’s
hard work and dedication to
our clients and the firm.”
Ross McFarlane, Managing Principal



Commissioner of Patents appeals
decision allowing Artificial
Intelligence as an inventor
The Federal Court judgment,
handed down on 30 July 2021,
recognised an AI machine (DABUS)
as an ‘inventor’ for Australian patent
application 2019363177 and received
widespread media attention.

As we reported earlier,
AU2019363177 naming DABUS
as the sole inventor is one of a family
of related applications around the
world. The applicant and creator
of DABUS, Dr Stephen Thaler,
has been actively campaigning for
AI to be recognised as an inventor.

In a number of jurisdictions including
the US, UK and Europe, counterpart
applications have been rejected
on the basis that DABUS is not
a natural person and therefore
cannot be named as an inventor.

The judgement therefore places
Australia as the first country to
judicially accept AI as an inventor.

In the words of Justice Beach,
we are both created and create,
why cannot our own creations
also create? With this sentiment,
his Honour noted that the word
“inventor” is not defined in the
Patents Act or Regulations, and
according to its ordinary meaning,
should be regarded as an agent
noun similar to “computer”,
“controller”, “regulator”, “distributor”,
“collector”, “lawnmower” and
“dishwasher”, in which the agent
can be a person or a thing. Justice
Beach was of the view that this
broad and flexible interpretation
was consistent with the object
of the Patents Act to promote
technology innovation, and the
flexible interpretation given to
“manner of manufacture” as defined
in the Statute of Monopolies.

Justice Beach further stated that
it was a misconceived assumption
that the chain of title to an invention
1 had to start with
the inventor, and
concluded that
under Section 15(1)
(c) of the Patents
Act 1990, the rights
of a person who
derives title to the
invention from an
inventor can extend
beyond assignments
to encompass
other means by
which an interest
may be conferred.

Accordingly, Dr
Stephen Thaler was
capable of deriving
title to the invention
from the AI machine.

The decision is likely to have
implications for the assessment
of inventive step. According
to Justice Beach, the ‘person
skilled in the relevant art’ can be
taken to be assisted by or have
access to artificial intelligence,
potentially raising the threshold
for inventiveness. However, the
question of whether the hypothetical
person skilled in the art could be an
AI machine remains open to debate.

Justice Beach also rejected the
Commissioner’s analogy between
‘inventor’ in the Patents Act and
copyright law which requires a
human author. Notably, the decision
does not discuss any analogy
between ‘inventor’ in the Patents
Act and ‘designer’ in the Designs
Act. Registered designs protect
the visual appearance of a product
and, like patents, provide IP owners
with a limited time monopoly to
incentivise innovation. The invention
described in AU2019363177 relating
to a food or beverage container with
a unique wall profile could certainly
Thaler v Commissioner of Patents [2021] FCA 879
be considered a registrable
design. Interestingly, Section 13
of the Designs Act 2003 specifically
refers to the designer as ‘the
person who created the design’.

It would be a strange outcome
if DABUS could be considered
the inventor of a container for a
patent application but couldn’t be
considered a designer for the same
container in a design application.

We eagerly await the decision
from the Full Federal Court.

Inspire September 2021
The Commissioner of Patents has appealed
the Federal Court decision of Justice Beach
in Thaler v Commissioner of Patents 1
which recognised that an AI machine
could be an inventor for a patent.

3 Helen McFadzean | Senior Associate
BE(Hons) Mechatronics MIP FIPTA
helen.mcfadzean@pof.com.au