In a fairly predictable development, Stephen Thaler has asked the Federal Court of Australia to review the Patent Office’s finding in February that a patent application cannot be validly filed in this country naming a machine as inventor. The ‘Application for Judicial Review’ was filed on 9 March 2021 in the Victorian Division of the court, and has been assigned number VID108/2021. Having been represented by Davies Collison Cave (DCC) in the patent application filed at the Patent Office, Thaler is represented in the Federal Court proceeding by Allens. The reasons for this change are unclear – DCC incorporates a legal practice as well as its patent and trade marks attorney practice, and could presumably have handled the Federal Court application. However, it is not unusual for applicants to switch representatives when moving from the Patent Office to the courts, either from necessity, or due to a perception that different firms have particular strengths in different areas of practice.
While the case may be casually characterised as an ‘appeal’ against the Patent Office decision, it is not technically an appeal under the Patents Act 1990. The Act, and the Patents Regulations 1991, expressly set out the various decisions that are appealable to the Federal Court, and the lapsing of an application for failing to identify a valid inventor is not such a decision. Instead, the application for review is made under the Administrative Decisions (Judicial Review) Act 1977 (ADJR Act), which provides more generally for review of administrative decisions by the Federal Court.