Home Insights High Court denies special leave in AI inventorship case

High Court denies special leave in AI inventorship case

The High Court of Australia has denied an application for special leave to a patent applicant who had filed an Australian patent application naming an artificial intelligence (AI) system as the inventor. 

The High Court’s decision means that the prevailing position in Australia – that a patent application cannot identify a non-human inventor – stands. That position is consistent with the position in other jurisdictions where corresponding applications have been filed (including the United States, United Kingdom, the EU, New Zealand, Taiwan, Korea, Israel and India) noting that appeals are still on foot in some of those jurisdictions.

Although this is the end of the line for this particular patent application, the High Court’s comments leave the door open for the ‘inventorship issue’ to be heard by the High Court in future, if a more appropriate case is brought before the Court. 

The Court appeared concerned to resolve the underlying question of whether the AI system was indeed the only inventor, and in the present case it had been agreed between the parties that the applicant, Dr Thaler, was not an inventor. The Court’s comments suggest that an appropriate case for determination may involve a natural person claiming to be the inventor and encountering rejection on the basis that the true inventor is an AI system.

It is worth remembering that this line of decisions focused on the procedural question of whether the application in question, nominating a non-human inventor, was validly filed for the purpose of the Act. It says nothing about the merits of the claimed invention, or whether the invention was capable of being granted on its merits. It also does not preclude the filing of patent applications for inventions that utilise AI, so long as the applications only list humans as inventors (any such application would, of course, have to comply with the usual requirements for patentability before a patent was granted). 

The policy debate also remains open, and it remains to be seen whether the Australian Government will consider amending the Patents Act 1990 (Cth) (Act) or Patent Regulations 1991 (Cth) (Regulations) to recognise non-human inventors. 

Background and procedural history

In 2019, Dr Stephen Thaler filed Australian Patent Application No. 2019363177 for ‘Food container and devices and methods for attracting enhanced attention’ (Application). Dr Thaler nominated his AI system, ‘DABUS’ as the inventor of the Application. 

As we reported here, a Delegate of the Commissioner of Patents rejected the Application for failing to meet formality requirements set out in the Patent Regulations 1991 (Cth), as it was not possible to identify a person who could be granted a patent on the Application.[1] 

Dr Thaler appealed that decision to the Federal Court of Australia. As we reported here, in a trail-blazing decision that received global media attention, a single judge of the Federal Court of Australia agreed with Dr Thaler. His Honour found that ‘inventor’ was not defined in the Act or Regulations, and that there was nothing that expressly prohibited an AI from being listed as an inventor in the Application.[2] 

The Commissioner of Patents then appealed Justice Beach’s decision to the Full Court of the Federal Court of Australia. As we reported here, an enlarged bench of five Judges overturned Justice Beach’s decision. In a unanimous decision, the Full Court held that an ‘inventor’ must be a ‘natural person’ – based on the historical centrality of the role of a human inventor in patent applications, the scheme of the Act and Regulations, and the natural reading of section 15(1) of the Act.[3] 

Dr Thaler sought special leave to appeal that decision to the High Court of Australia, Australia’s superior Court and his last opportunity to have the Application considered by an Australian Court. 

Special leave application

Before the High Court would hear the appeal, Dr Thaler had to satisfy a smaller number of judges to grant ‘special leave’ to appeal. Most special leave applications are decided ‘on the papers’, based on written submissions filed by the parties. 

In this case, Dr Thaler’s application was heard in person by three judges – Justices Gordon, Edelman and Gleeson.[4] During the hearing, their Honours heard that Dr Thaler’s case had been run in the Federal Court (both at first instance and on appeal) by reference to certain facts that were agreed between Dr Thaler and the Commissioner of Patents. Those agreed facts included that Dr Thaler was not the inventor of the alleged invention the subject of the Application. 

This left the High Court in the position that if leave was granted, the Court would be limited to considering the narrow question of whether the Commissioner was right to reject the Application, solely because a non-natural person was listed as the inventor. The Court could not grapple with the factual question of whether or not DABUS was the inventor (or even co-inventor) of the Application. Rather, it would have to have proceeded – as the courts below had done – on the basis that DABUS was the inventor. 

This may well have been weighing on the Court’s mind when, in rejecting the special leave application, Justice Gordon (speaking for the Court) stated that this case 'was not the appropriate vehicle to consider the question of principle sought to be agitated' by Dr Thaler. 

This leaves open the possibility that the High Court will grapple with this issue in future, if an ‘appropriate vehicle’ is presented to the Court. In the meantime, it remains to be seen whether the Australian Government considers any changes to the Act or the Regulations are required.

[1] Stephen Thaler [2021] APO 5

[2] Thaler v Commissioner of Patents [20221] FCA 879

[3] Commissioner of Patents v Thaler [2022] FCAFC 62

[4] Thaler v Commissioner of Patents [2022] HCA Trans 199


Alex Dunlop

Special Counsel


Intellectual Property Technology, Media and Telecommunications

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