In Thaler v Commissioner of Patents,1 the High Court dismissed an appeal on 17 March 2023 by Dr Stephen Thaler from a decision of the Assistant Commissioner of Patents that an inventor could only be a natural person.
In May 2021, Dr Thaler applied for a New Zealand patent for an “improved food container for liquids”. In the application, Dr Thaler named the inventor as “DABUS, [t]he invention was autonomously generated by an artificial intelligence”. DABUS stands for “Device for the Autonomous Bootstrapping of Unified Sentience”; an AI developed and owned by Dr Thaler.
In support of his patent application, Dr Thaler provided evidence that DABUS “created / developed / arrived at the inventions through a process ultimately involving unsupervised generative learning without contributions by me or any other person.” Dr Thaler’s position is clear; it would be factually incorrect to view anyone else as the inventor.
The Patents Office’s decision
On 31 January 2022, the Assistant Commissioner of Patents found that the term “inventor” as used in the Patents Act 2013 refers only to a natural person, an individual, and that it is “intrinsic to the proper construction of the Patents Act 2013 that inventors fall within the class of natural human persons”. Accordingly, any patent application designating an AI as the inventor will be declined by the Intellectual Property Office of New Zealand.
The appeal to the High Court
Dr Thaler appealed the Assistant Commissioner’s decision to the High Court. The appeal was heard by Justice Palmer on 8 November 2022. On 17 March 2023, Justice Palmer dismissed the appeal. He agreed with the Assistant Commissioner and found that given the purpose of the Patents Act 2013, it would be inappropriate for the courts to effectively expand the definition of inventor, such a step being more appropriately reserved for Parliament.
The High Court decision
The High Court reviewed the history of New Zealand’s patent legislation from the Patent Act 1860 to the Patents Act 2013. Unsurprisingly, the Court found that for over 160 years, the legislation has contemplated the inventor would be a natural person. In particular, the Patents Act 1953, despite not including a definition of ‘inventor’, refers to the inventor throughout the Act as a ‘person’ and archaically as ‘him’.
In the 13 years it took for the law reform process to result in the Patents Act 2013, there were no discussions that an inventor could not be a natural person.
A matter of statutory interpretation
As his Honour points out in the judgement, this case was, perhaps disappointingly, simply a matter of statutory interpretation - Does the Patents Act 2013 allow an AI to be named as an inventor?
Under section 10 of the Legislation Act 2019, the meaning of any statute must be ascertained from its text, in light of its purpose and context.
The High Court found that there is nothing in the legislative history to indicate that Parliament’s purpose was to open up the possibility of an AI being an inventor under the Patents Act 2013.
The Court also found that the legislative context of the Patents Act 2013 “leans in favour of an inventor being a person”:
- Section 9 refers to “the inventor” and to “any other person” for the purposes of disregarding disclosure of a matter constituting an invention (i.e. the ‘grace period’);
- So does section 177, for the purpose of exercising the powers of the court on certain applications; and
- Sections 189 to 193 relate to inventors who are persons, where a request or claim is made to be mentioned as an inventor.
It is not surprising that the legislative history and context of the Patents Act 2013 reveals no indication that Parliament contemplated an inventor could be non-human. Whilst it is true, as the Court points out in its judgment, that AI was known when the Patents Act was passed in 2013, it is fair to say that it was barely conceivable then that an AI could one day invent within the meaning of patent legislation.
Whilst the Court acknowledges in its decision that under section 11 of the Legislation Act, “legislation applies to circumstances as they arise”, it was one step too far for the Court to find that an AI could be an inventor in light of the clear language of the Patents Act 2013.
Whether the owner of an AI should be allowed to capture the gains from inventions by the AI, in the form of a 20-year monopoly to exploit the invention, is a matter of public policy. It is noteworthy that after consultation, the UK government concluded last year that it planned no change to UK patent law for AI-devised inventions.
It could be argued that it is still too early to legislate on the patentability of AI-devised inventions. The true potential of AI is still unknown. One wonders if AI will ultimately reach a level of sophistication which will render the whole patent system unworkable by devising millions of inventions every year. Or will that be millions of inventions every week, or every day?
We may then need AI to examine those millions of patent applications and litigate the millions of patent infringement law suits. By then, AI will have truly taken over.
If you have any questions or require any other guidance, please contact our team or your usual Bell Gully adviser.