InLaw: DABUS decision makes Australia look like a champion of innovation, not a sucker


Grant Shoebridge, Special Counsel, Patent Attorney, Pearce IP

Australia recently got into the global IP spotlight when the Federal Court of Justice controversially ruled that an artificial intelligence system (AI) DABUS may be an inventor of a patent. Grant Shoebridge, Special Counsel at Pearce IP, a boutique law firm that provides intellectual property lawyers, patent attorneys, and trademark attorneys for the pharmaceutical, biopharmaceutical, and life sciences industries, examines the implications of choosing AI in pharmaceutical research

The response from Australian IP commentators to the court ruling was immediate, ranging from describing the ruling as “progressive” to the risk of Australia “being left alone and looking like a fool,” according to IP blogger Mark Summerfield.

Arguments for recognizing an AI inventor focus on the desire for more innovation. The criticism is based at least in part on the fear that an expansion of patent applications by AI inventors will play into the hands of opponents of the patent system. Such reviews are not legitimate in my opinion. Rather, the decision is progressive and insightful and, if confirmed, will result in Australian case law paving the way for patent protection that will support future innovation.

DABUS and the Covid-19 pandemic

One specific criticism of the DABUS decision challenges the need for more patents to be granted at a time when, as Summerfield claims, “We are in the grip of a global pandemic and very serious questions are being asked as to whether patents are of net benefit to people the world by incentivizing the development of new vaccines and treatments, or by denying affordable access to essential care and protection in poor and developing countries.

In this criticism, there is a striking lack of discussion that the granting of more patents indicates more innovation and that there could not be a more important point in time for innovation.

Concerns about the impact of patent monopolies during the Covid-19 pandemic and the availability of treatments and vaccines to developing countries seem an inaccurate oversimplification. Rather than throwing stones at the patent system during a global pandemic, I propose that the masses pay homage to it in order to get big drug companies to develop and commercialize effective vaccines against Covid-19 at the speed of light to save humanity.

Andrew Christie, professor of law at Melbourne University, made the most prominent point in an article titled “Why Waiving Patent Rights on Covid-19 Vaccines Is Not the Answer,” published earlier this year in the Sydney Morning Herald that the retention of rights by patents facilitates – not hinders – the availability of vaccines. In addition, in the event of a “national emergency or other extreme urgency”, countries can disregard patent rights under the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights). The real problem with the availability of vaccines in poor and developing countries is therefore related to the practical ability to deliver rather than negotiating patent rights.

Criticism of the DABUS decision due to the circumstances of the current Covid-19 pandemic, fearfully bows down to a flimsy ideology without recognizing that the commercialization of the medical breakthroughs we rely on to free ourselves from the grips of the pandemic, depends solely on patents

Declaration of the subject matter of the Patent Act

The DABUS decision has brought the newly introduced object declaration to the patent law into focus. Justice Beach J extensively examined the potential of AI to bring about innovations, for example in the pharmaceutical industry, and took the view that the non-approval of patents on such innovations because a legitimate inventor could not be listed, the “counterpart” to the newly introduced object clause in the patent law, which states:

  • The aim of this law is to provide a patent system in Australia that will promote economic well-being through technological innovation and the transfer and diffusion of technology. Over time, the patent system balances the interests of manufacturers, owners and users of technology and the public.

One of Summerfield’s criticisms of the DABUS decision, insofar as it relates to the interpretation of the property clause, was that Beach J “places too much emphasis on the elements of technological innovation and the transfer and diffusion of technology and the interests of manufacturers and owners has laid “. technology and very little to the general economic well-being and interests of technology users and the wider public.

However, this position seems to suggest that patents, by default, somehow work to the detriment of technology users and the wider public. This does not seem to be a valid argument.

According to a recent study by Professor Andrew Christie entitled “Evidence of ‘evergreening’ in Secondary Patenting of Blockbuster Drugs,” patents do not inhibit competitor innovation, but stimulate it, at least in the pharmaceutical field. Another fact that seems to have escaped critics is that patents allow the commercialization of new products, that is, products that are brought to market for the benefit of the public. Thus, Beach J’s reasoning in relation to the property clause, which recognizes patents as beneficial to “manufacturers, owners, and users of technology and the public”, appears to be valid.

Pharmaceutical Innovation and AI

In the DABUS decision, Beach J refers to a discussion of the Joint Institute for Innovation Policy in its final report “Trends and Developments in Artificial Intelligence: Challenges to the Intellectual Property Rights Framework” from September 2020. Beach J comments on the report notes that industry is applying AI to pharmaceutical research in a number of ways, including:

  • Identification of molecular targets
  • Automation of high-throughput processes to identify clinical candidates
  • Drug reuse
  • Polypharmacology – drug molecules that target multiple targets
  • Vaccine development and simulation, including understanding the three-dimensional structure of proteins
  • Gathering and using information from databases related to molecular pathways, crystal structures, binding affinities, drug targets, disease relevance, chemical properties and biological activities
  • Predictive modeling in clinical trials

In the grounds of the judgment, Beach J refers to the relevant point [55], which focuses on “two key drivers in recent AI advances that could greatly accelerate drug discovery.”

These include:

  • Digitization of existing scientific knowledge that enables the discovery of new active substances that could target disease targets
  • Recent advances in machine learning that can help manage the complexities of navigating the vast search space for potential drugs

Beach J concludes that “there is every indication that the term“ inventor ”should not be used narrowly. And this would inhibit innovations not only in the field of computer science, but in all other scientific areas that could benefit from the results of an artificial intelligence system “(at [56]).

Innovation comes first

Beach J’s decision is clearly focused on supporting contemporary and future innovations not only in the field of computer science, but in all scientific fields, including pharmacy. Approving AI inventors could therefore have a significant impact by moving Australia to the fore in future patent protection, including pharmaceuticals, as AI inventors have been rejected in other key regions, including the US and Europe. Obviously, without patent protection, there is no guarantee that innovations created by AI will be commercialized.

As expected, an appeal was filed against this controversial decision and a decision by the Federal Court of Justice is eagerly awaited.

Regardless of the final political outcome for the AI ​​inventors in Australia, Beach J’s decision should be seen as a philanthropic trigger for Australia to reset itself as an innovative culture where our catchphrase is “innovation and patents save the world”.


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