This is an abridged article, published at www.stephens.com.au.
Artificial intelligence (AI) and automated decision-making technology is being deployed by government and business to automate or improve operational capabilities and efficiencies. AI technology is also increasingly being used in the inventive or creative process to generate inventions and literary, artistic, musical and dramatic works without direct human involvement. However, Australian intellectual property (IP) laws are being challenged by AI and IP protection of AI inventions or works is at risk.
Can AI generated inventions be the subject of Patent Protection in Australia?
Following the appeal court decision in Commissioner of Patents v Thaleri, AI generated inventions will not be eligible for patent protection in Australia, unless human contribution to inventorship can be established. Dr Thaler has appealed to the High Court seeking to reverse the appeal court decision that AI systems could not be named as an inventor on the patent application.
The Australian courts are still to consider the question of whether ownership of the source code and computers of the AI system which generates the output the subject of the invention, including the operation and maintenance of the AI system, is sufficient human input to constitute inventorship for patent protection.
Can AI generated Works be the subject of Copyright Protection in Australia?ii
Businesses or individual using AI computer systems or technology to generate literary works, such as reports, directories or other compilations, databases, computer software, digital images, designs or plans or artistic, musical or dramatic works are also at risk of not having copyright protection.
In Australia, such works will not be protected by copyright where they are AI computer generated and the party claiming copyright is unable to establish that the works originate from a human author or authors exercising sufficient skill and judgement or intellectual effort in the creation or production of the works.
Unlike the United Kingdom, Australia has not amended its Copyright Act to provide specific copyright protection to computer generated works.iii
Practical Considerations for Intellectual Property Protection of AI or Computer Generated Works
Establishing human contribution to an invention or work requires documented evidence. Therefore, it is important that organisations have appropriate processes and systems in place that they can rely upon to establish human input including:
- Documentation that records the AI systems used in the creation or production of the work or invention, such as:
- Development costs of the AI system;
- Ownership of the AI system;
- Operational and maintenance cost of the AI system and the entity who pays these costs;
- Whether the AI system is used under licence from a third party and the licence terms and conditions.
- Documentation that records each step in the creation or production of works or invention from “idea” to “concept” through to production phase including a description of the work or invention, the contribution made by each author or inventor, relevant dates and times and details of any AI contribution in the creation or production of the work or invention.
- Regular audits of the processes and systems to ensure compliance.
If there is a risk of not being able to establish human involvement in AI generated works or inventions for copyright or patent protection, then contractual or trade secrets protection should be considered.
Article by: Katarina Klaric, Principal, Stephens Lawyers & Consultants
© 17-25 May 2022 — Stephens Lawyers & Consultants
Disclaimer: This article is not intended to replace obtaining legal advice
i[2022] FCAFC 62. iiAlso see: Al Generated Works and Copyright Protection, Katarina Klaric, August 2019, www.stephens.com.au iiiUnder section 9, Copyright, Designs and Patents Act 1988(UK), the author of computer generated literary, dramatic, musical and artistic works is taken to be the person by whom the arrangements necessary for the creation of the work was undertaken.