Why cannot our creations also create


Thaler v Commissioner of Patents [2021] FCA 879

The Australian Federal Court has remarkably overturned an earlier hearing decision by the Australian Patent Office concluding that an Artificial Intelligence (AI) can be an inventor for an Australian patent application. As part of a global series of cases testing the boundaries of what it means to be an inventor, this decision appears to be the first that has recognised an AI as an inventor for a patent application. 


Stephen L. Thaler (“Thaler”) filed Australian Patent Application 2019363177 (“the Application”) on 17 September 2019, titled ‘Food Container and Devices and Methods for Attracting Enhanced Attention’. The Application relates to a container with a wall including a fractal profile with corresponding convex and concave fractal elements on interior and exterior surfaces. The fractal patterns enable multiple containers to be coupled together via inter-engagement whilst also improving grip and heat transfer. Unusually, neither Thaler nor any other natural person was named as an inventor. Instead, the inventor was named “DABUS, The invention was autonomously generated by an artificial intelligence”. DABUS is an acronym for “Device for the Autonomous Bootstrapping of Unified Sentience”.

The Deputy Commissioner of Patents (Deputy Commissioner) concluded that only a person (natural or legal) can be granted a patent and that, in the absence of devolution of title from the inventor, the inventor will be the applicant. An applicant can be entitled to have the application assigned to them, but it was generally understood that a machine cannot own property and therefore cannot assign something it does not own. The Deputy Commissioner concluded that an AI cannot be named as an inventor of an Australian patent application because an inventor must have a beneficial interest in property and therefore must be a natural person.

Our more detailed discussion regarding the Deputy Commissioner’s decision can be found here. Thaler appealed the Delegate’s decision to the Federal Court of Australia.


Justice Beach of the Australian Federal Court heard the appeal and handed down his decision on 30 July 2021. 

In summary, Beach J concluded:

…in my view an artificial intelligence system can be an inventor for the purposes of the Act. First, an inventor is an agent noun; an agent can be a person or thing that invents. Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor. Third, nothing in the Act dictates the contrary conclusion.1

Beach J noted that “there is no specific provision in the Act that expressly refutes the proposition that an artificial intelligence system can be an inventor.” Furthermore, His Honour highlighted that in the context of English language construction, an inventor is an agent noun and that the required “doer” need not be a natural person:

“… as the word “inventor” is not defined in the Act or the Regulations, it has its ordinary meaning. In this respect then, the word “inventor” is an agent noun. In agent nouns, the suffix “or” or “er” indicates that the noun describes the agent that does the act referred to by the verb to which the suffix is attached. “Computer”, “controller”, “regulator”, “distributor”, “collector”, “lawnmower” and “dishwasher” are all agent nouns. As each example demonstrates, the agent can be a person or a thing. Accordingly, if an artificial intelligence system is the agent which invents, it can be described as an “inventor.”2

His Honour also believed that the concept of an “inventor” should be flexibly interpreted in a similar way to manner of manufacture, particularly in light of technological developments:

“…in considering the scheme of the Act, it has been said that a widening conception of “manner of manufacture” is a necessary feature of the development of patent law in the twentieth and twenty-first centuries as scientific discoveries inspire new technologies” (D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334 at [18] per French CJ, Kiefel, Bell and Keane JJ). I see no reason why the concept of “inventor” should not also be seen in an analogously flexible and evolutionary way. After all the expressions “manner of [new] manufacture” and “inventor” derive from the 21 Ja 1 c 3 (Statute of Monopolies) 1623 (Imp) s 6. There is a synergy if not a symmetry in both being flexibly treated. Indeed, it makes little sense to be flexible about one and not the other. Tension is created if you give flexibility to “manner of manufacture” and then restrict “inventor”. You would be recognising an otherwise patentable invention and then saying that as there is no inventor it cannot be patented.”3

Beach J also considered that the Patents Act 1990 should also be interpreted in light of the newly introduced object clause of Section 2A, namely “The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology”. 4 As such, restricting an inventor to only a natural person would be contrary to this underlying objective. 

His Honour also concluded that the law of accession applies to inventions developed by an AI to place ownership of anything developed by the AI in the hands of its owner. In particular, Beach J highlighted that there is no requirement for an inventor to assign rights but rather only that the owner is entitled to have rights in the invention assigned to them. 

“In my view, Dr Thaler, as the owner and controller of DABUS, would own any inventions made by DABUS, when they came into his possession. In this case, Dr Thaler apparently obtained possession of the invention through and from DABUS. And as a consequence of his possession of the invention, combined with his ownership and control of DABUS, he prima facie obtained title to the invention. By deriving possession of the invention from DABUS, Dr Thaler prima facie derived title. In this respect, title can be derived from the inventor notwithstanding that it vests ab initio other than in the inventor. That is, there is no need for the inventor ever to have owned the invention, and there is no need for title to be derived by an assignment.” 5

Based on these reasons, Beach J concluded that DABUS can indeed be named as an inventor for an Australian patent application. As a result, Beach J remitted the Australian patent application back to examination for further consideration by the Australian Patent Office.

Final thoughts

This will not be the last that we will hear about this case. The Commissioner of Patents has appealed the decision of Beach J to the Full Federal Court. This decision stands in stark contrast to other decisions reached by US, European and UK authorities for Thaler’s corresponding patent applications which list DABUS as an inventor. Should the Federal Court’s decision stand, it will also be interesting to see whether this development in Australian patent law results in an increase in Australian patent filings where an AI is listed as an inventor and whether this could result in a completely new field of commerce.

Furthermore, this decision is the first time that the newly introduced object clause of Section 2A has received judicial consideration. Notably, submissions by the Institute of Patent and Trade Mark Attorneys (IPTA) dated 15 August 2019 stated that “IPTA also strongly opposes the introduction of an object clause into the Patent Act 1990 because it is unnecessary, will potentially reduce the scope of patent eligible subject matter and introduce significant uncertainty for businesses.” This submission was not adopted by the Senate Standing Committee on Economics with the subsequent introduction of Section 2A to the Patents Act 1990. It will be interesting to see whether Section 2A becomes a future breeding ground for creative arguments in Australian patent law. 


1 Thaler v Commissioner of Patents [2021] FCA 879, [10]

2 ibid, [120]

3 ibid, [121]

4 Patents Act 1990 (Cth) s 2A

5 Thaler v Commissioner of Patents [2021] FCA 879, [189]

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