High Court refuses to consider AI as patent 'inventor'

The High Court has refused to consider artificial intelligence (AI) as an “inventor” in a recent patent case.

The case of Thaler v Commissioner of Patents [2023] NZHC 554 concerns the issue of whether AI could be considered an inventor in New Zealand. Dr Stephen Thaler created and owned an AI called DABUS, which stands for Device for the Autonomous Bootstrapping of Unified Sentience. DABUS autonomously creates a new food container that can be interlocked with others.

Dr Thaler applied for patents in the United Kingdom, the United States, and New Zealand, naming DABUS as the inventor. He asserted it would be factually incorrect to view anyone else as the inventor, which would open the patent to challenge. The Assistant Commissioner of Patents refused to accept the application because only humans can be inventors. The Australian, United Kingdom, and United States courts have rejected Dr Thaler's applications in their jurisdictions.

Dr Thaler elevated the case to the High Court. The Patents Act 2013 is the governing legislation for patent rights in New Zealand. Dr Thaler argued that when the act was passed in 2013, Ais existed and worked in various ways, including inventing. He contended that the 2013 act allows the "actual deviser" to be named as the inventor regardless of whether the deviser is human, and there is no requirement for the inventor to be a person. Dr Thaler further argued that the 2013 act removed the previous act's qualifications of "inventor" as "the person" who is the inventor. The definition is now "person independent."

Dr Thaler stressed that the inventor is not required to be a natural person. The naming of an inventor is a procedural formality, not a substantive requirement. Dr Thaler argued that "AI must be recognized for what it is." It would be factually incorrect and encourage litigation and revocation of a patent, to say anyone but DABUS is the inventor. He noted that the term "inventor" should be construed to promote technological innovation by rewarding it, regardless of whether it is made by a human or a human and the machine working together.

The Commissioner of Patents disagrees that DABUS devised or invented the invention or that an AI can invent. The Commissioner argued that there is no proof that by inserting a new definition of "inventor", Parliament intended to remove the requirement that an inventor be a natural person. Other relevant provisions of the 2013 act that mention "inventor" contemplate the inventor as a natural person. The Commissioner asserted that extending the definition to non-persons, such as an AI, would be a strained and unnatural interpretation.

The Commissioner concluded that an "inventor" must be a natural person. Dr Thaler did not specify a valid inventor in the application. Consequently, he is not entitled to a grant of a patent.

The High Court wrote in its decision, "The legal implications of AI are interesting and are sure to be the subject of increasing debate and focus as AI capabilities develop. But, perhaps disappointingly, those implications, in this case, are simply a matter of statutory interpretation."

The court noted that the definition of "inventor" under the 2013 act refers to the "actual deviser" of the invention without explicitly saying that an inventor must be a person. Section 22(1) states that a patent may only be granted to a person who satisfies one of three conditions, including that they are "the inventor" or derive title to the invention from the inventor. However, the court pointed out that Dr Thaler is not applying for DABUS to be granted the patent, only for DABUS to be named the inventor. Section 22 does not provide explicitly that an inventor must be a person. However, the court viewed that the natural reading of the section suggests the inventor is a person.

The court explained that New Zealand patent legislation from 1860 to 2013 was predicated on an inventor being a person. The explanatory note to the bill indicates the purpose behind the 2013 amendment was to prevent mere importers, who are not actual devisers of the invention, from qualifying as inventors.

The court considered Parliament's purpose in amending the act and found it inappropriate for the court to expand the definition of inventor through statutory interpretations effectively. The court ultimately decided to dismiss Dr Thaler's appeal.