AI-generated inventions remain unpatentable in Australia – for now

By Richard Hamer, Lauren John, Alexandra Moloney
Intellectual Property Patents & Trade Marks

End of the road for DABUS in Australia 3 min read

The High Court has decided not to weigh in on the novel issue of whether patent protection is available for AI-generated inventions.

As we previously reported, in 2021, Australia became the first country to judicially rule in favour of AI-inventorship, when Justice Beach of the Federal Court determined that an AI system can be named as the inventor on a patent application. However, the Full Federal Court then overturned that decision earlier this year. After an oral hearing, the High Court refused Dr Stephen Thaler's application for special leave to appeal. This means that – at least for now – in Australia, patents may only be granted for inventions by humans.

Key takeaways

  • In Australia, an AI system (a non-human) cannot be named as the inventor of a patent.
  • The High Court refused to grant Dr Thaler's application for special leave, on the basis that this application was not the appropriate vehicle to consider whether an AI system can be an inventor.
  • The court's decision to refuse special leave has ramifications for those industries that predominantly work in research and development, and use AI to innovate and create new inventions.

Reasons why the High Court refused special leave

The High Court (comprising Justices Gordon, Edelman and Gleeson) refused special leave with costs, on the basis that Dr Thaler's special leave application was not the appropriate vehicle to consider whether an AI system can be an inventor. The High Court was concerned that, if special leave were granted, it would be unable to explore whether he was in fact the inventor of the alleged inventions the subject of Australian patent application no. 2019363177 (the Application), notwithstanding DABUS's involvement. That question was not open on this application. This was because the Commissioner of Patents had rejected the Application at the formalities stage (and the question of who is entitled to an invention (including who is the inventor), is not considered until the examination stage), and because the parties had agreed for the purpose of the proceedings that Dr Thaler is not the inventor.

However, it was accepted by Dr Thaler and the Commissioner during oral submissions, and by the Full Federal Court, that this case raised questions of public importance. This means that the Court may revisit the issue of whether patents may be granted for AI-generated inventions in the near future.

Where to now?

AI-generated inventions are ineligible for obtaining patent protection – for now. Given the importance of AI to research and development, especially in the pharmaceutical industry, it is only a matter of time before the courts or the legislature will need to confront the question of patent eligibility for AI-generated inventions. 

Unlike in Australia, Dr Thaler's case has progressed to be heard before the UK's highest court, with oral hearings expected to take place in early 2023. The world will be watching to see whether the UK Supreme Court decides that AI-generated inventions are eligible for patent protection under the Patents Act 1977 (UK).