Taiwan’s Intellectual Property & Commercial Court (the IPC Court) published a decision on August 30, upholding the Taiwan IP Office’s ruling that an artificial intelligence (AI) system cannot be named as a patent inventor. Thaler v. Taiwan IP Office (TIPO), 110 Xing Zhuan Su 3, Taiwan’s IPC Court (August 2021).
The IPC Court’s rationales can be understood as follows:
- Although the Patent Law itself does not explicitly preclude a non-human inventor, this rule can be inferred from some of the most important bylaws. In the Patent Examination Guidelines, it is clearly stated that an inventor must be a human, or a natural person in legal term.
- The Enforcement Rules of the Patent Law requires disclosure of an inventor’s name and citizenship/nationality in a patent application. This formality requirement is long considered to be a measure protecting inventors’ personality rights which again derive from personhood.
- An inventor is someone who completes an invention through “mental creation” and mental creation can only be conceived by a human. Likewise, it is widely accepted that the patent system is designed for the encouragement and protection of the fruits of human’s mental activities.
- AI is neither a natural person nor a juridical person; it is a “thing.” A thing can only be an object rather than a holder of rights.
Little wonder that the AI in dispute is the famous DABUS (“Device for the Autonomous Bootstrapping of Unified Sentience”) developed by the team led by Dr. Stephen Thaler, CEO of the Imagination Engines, Inc. Several weeks before the IPC Court handed down the decision, Dr. Thaler had successfully convinced the courts in South Africa and Australia that AIs are eligible inventors.
The disputed Taiwan application (TW108140133) filed in November 2019 is not published, because it did not pass the formality examination. Yet from its name “Devices and Methods for Attracting Enhanced Attention” we know it must be a counterpart of EP18275174.3 calling for the eponymous invention.
As in other jurisdictions, the Taiwan application was filed in the name of Dr. Thaler, with DABUS being listed as the sole inventor. Dr. Thaler candidly reported to the examiner that DABUS is an AI and asserted it made the invention independently. Noticing the inventorship issue, the examiner rejected this application straightaway. Dr. Thaler appealed the ruling all the way up to the IPC Court, hence the reported decision. Never had the AI inventorship issue been addressed in a Taiwanese court before.
It is yet unknown whether Dr. Thaler has appealed the IPC Court decision to the Supreme Administrative Court, the final instance of appeal.
More about this Case
In the legal world shared by many civil law jurisdictions including Taiwan, the definition of the word “person” is clear. Essentially, it means a natural person but it can also mean a juridical person where the law expressly or implicitly so permits. Apart from that, no other type of person has a place yet in Taiwan’s legal system. Theoretically speaking, even if an AI passes the Turing test someday, it may still have difficulty passing the inventor test in Taiwan.
Another interesting point is that, as Taiwan’s Copyright Law provides, an author can be a juridical person, yet juridical persons, as mentioned above, are not qualified inventors in the realm of patent law. Some consider this a systematic inconsistency in Taiwan’s IP law regime. Pointing out this inconsistency, Dr. Thaler’s attorneys asked: why cannot the Patent Law accept non-human inventors just as Copyright Law accepts non-human authors? The IPC Court, however, chose to leave this argument unanswered, possibly because this argument, even if it held true, could at best lead to the conclusion that an inventor can be a juridical person, but AI is not a juridical person.
Neither did the judges consider Dr. Thaler’s recent win in Australia, but for a different reason. Whereas the Australian court decision was delivered on July 30, the IPC Court hearings ended on July 29, 2021 and no new evidence was permitted thereafter. Even if the Australian court decision had had a chance to enter the IPC Court, its reasoning might not fit into the Taiwanese context. In Taiwan’s patent law, the Chinese term for the word inventor literally means “an invent-person,” which leaves little room, as opposed to “invent-or,” for a broader interpretation (like that rendered by the Australian court) of this term to view it as an agent noun not exclusively linked to a human being.
Readers of the IPC Court decision might be curious about why Dr. Thaler’s lawyers stressed that he “candidly reported” DABUS’s AI identity. One reason is that, in a Taiwanese patent application, inventor information required by TIPO is limited to inventors' citizenship/nationality, names, and Chinese translated names only. No disclosure beyond this point is required, and no submission of an assignment from the inventors or their IDs is needed. Further, inventorship and the right to file an application are substantively examined only after a challenge occurs and, as another recent IPC Court decision suggested, only one with genuine right to file an application has the standing to make this challenge. Stone Energy Technology Corp. v. Gogoro Taiwan Ltd., 109 Min Zhuan Su 20, Taiwan’s IPC Court (May 2021). When all these facts are put together, it is possible for an identity-concealed AI to be taken as a human inventor in an application, especially when its name sounds like a human. The critical issue in this “imitation game” might turn out to be the nationality of AI — can AI have a nationality (like a vessel)? DABUS was described as stateless in the Taiwan application, but a stateless inventor always rings an alarm to examiners even before AIs are employed in innovation.
Despite the outcome of this case, the questions raised and explored in the hearings have delved into some of the fundamental areas of the patent system. These explorations allow us to reconsider what patents are and what they are meant to protect.