Artificial intelligence (AI) has rapidly expanded to various fields in recent years. Although artificial intelligence itself does not have a strict definition, generally it is a form of analysis produced through algorithms, supplemented by powerful computing capability, big data, deep learning, and other characteristics in various applications. In theory, AI can provide quick and excellent analysis, judgment and other auxiliary functions. But if human-like “creative” algorithms are added to artificial intelligence, can a patent be applied for it ? Should it be protected by law? Such questions are part of an emerging issue. The Taiwan Intellectual Property and Commercial Court (IPCC) has two related cases in 2021 for reference.
- Case history
DABUS is an artificial intelligence created by Stephen L. Thaler.
In 2019, Mr. Thaler successively filed two invention applications with the Taiwan Intellectual Property Office (TIPO) with himself as the applicant. In the applications, the inventor was indicated as the artificial intelligence DABUS (abbreviation of the device name for the autonomous bootstrapping of unified sentience). TIPO requested that a natural person be named as the inventor but the applicant did not comply, so TIPO dismissed procedurally these two applications. After appealing with the Ministry of Economic Affairs (MOEA), both appeals were rejected and then two administrative suits were initiated in the Intellectual Property and Commercial Courts (IPCC), which were both dismissed.
| Application Number | 108140133 | 108137438 |
|---|---|---|
| Title of Invention | Devices and methods for attracting enhanced attention | Food container |
| Application Date | 5-Nov-19 | 17-Oct-19 |
| Decision by TIPO | 29-Jun-20 | 29-Jun-20 |
| Appeal Number | Jing-Su-Zi No. 10906611620 | Jing-Su-Zi No. 10906311370 |
| Appeal Decision Date | 2-Dec-20 | 3-Dec-20 |
| Administrative Suit Case Number | 2021 Xing-Zhuan-Su No. 3 | 2021 Xing-Zhuan-Su No. 4 |
| Administrative Suit Judgment Date | 19-Aug-21 | 6-Oct-21 |
- Applicant’s Assertion
The main basis asserted by Plaintiff for the suit is that the current law does not expressly restrict that the inventors must be limited to natural persons:
- The Plaintiff has filled in the application form in detail, and honestly disclosed that the inventor is artificial intelligence. When the Defendant (TIPO) received the application, there was no procedural requirement to examine whether the inventor was a natural person, and the Defendant did not have any legal ground not to accept the case in accordance with the Patent Act.
- Per Copyright Act in Taiwan, a “juridical person” can be an author, enjoying the personal right with expression right of name. Hence there is no reason to prohibit a non-natural person be the inventor in the Patent Act, not to mention that there is no express stipulation to prohibit artificial intelligence as an inventor. In regard to the Enforcement Rule of Patent Act and the Patent Examination Standards cited by the Defendant, they are administrative rules or standards with lower legal power and shall not be used to increase the restrictions that the law does not originally have, and they are not in compliance with the principles of legal supremacy and legal reservation.
- The corresponding invention cases were filed and pending in many foreign countries*. Although in some countries the applications were rejected due to express stipulation in the said patent laws that the inventor must be a natural person, Taiwan Patent Act does not require an inventor be a natural person. Such self-imposed restrictions may contribute to lost opportunities for Taiwan to lead in the international innovation competition.
- Judgment of the IPCC court
The two judgments are based on the inventor’s capacity of enjoyment of right and the right to express his name, and both hold that the inventor must be a natural person.
IPCC Judgment No. 110 Xing-Zhuan-Su-Zi No. 3
- Creation is a collective term for the achievements of human spiritual activities. In order to encourage the research and development of science and industrial technology, a specific period of exclusive use right is given to the person who has made substantial contributions to the creative content. It is also expressly stipulated that only inventors, creators, designers or their assignees or successors can be patent applicants.
- Per the Interpretation of the Patent Law Article by Article, it is mentioned in Article 5 of the Patent Act that, the research and development work of a juristic person is carried out by a natural person; the inventor’s right to express their name is a kind of personal right, so the inventor must be a natural person. In the Patent Examination Standards, Chapter 1, Section 1-2-1 also provides that the inventor must be a natural person. That is, the inventor must be a natural person in the interpretation of the current law.
- However, DABUS is not a juristic person established in accordance with the laws of Taiwan, nor a natural person, which is also admitted by the plaintiff’s agent ad litem. Therefore, artificial intelligence DABUS is regarded as a “thing” in Taiwan law, which belongs to the object of rights and cannot be the subject of rights. It has no capability and qualification to enjoy rights. Accordingly, being lack of a natural person as the inventor, the Court considers that the original decision made by TIPO not to accept the application is not illegal.
IPCC Judgement No. 110 Xing-Zhuan-Su-Zi No. 4
IPCC clearly pointed out that an artificial intelligence system has no self-consciousness or mind to accomplish the invention and engage in spiritual creation. Creation will not be motivated due to the expectation by protection of patent right, nor can AI be a subject of the right of actual creation and then transfer the right to others. Also the owner or proprietor of the so-called artificial intelligence system does not comply with the requirement for a patent applicant per Article 5, Paragraph 2 of the Patent Act.
- Observation
The activities of modern society, including industrial, cultural, and economical activities, have brought considerable changes and impacts to our daily lives due to the development of artificial intelligence. Although in the above two cases, the Court does not recognize artificial intelligence as the inventor, it raises the issue of whether “wisdom” of artificial intelligence can be a subject of an invention, and subsequently be protected under the law. However, if artificial intelligence can be the subject of rights, we must further consider the rights and obligations between the creators of artificial intelligence and the AI.
*From the news, the corresponding patent applications were also filed in Australia, EPO, the United Kingdom, the United States, and South Africa. Among them, in South Africa patent was granted in July 2021 as the country does not adopt substantive examination system for an application; whereas in EPO, the United Kingdom and the United States, the applications were rejected. Interestingly in Australia, the application was originally denied, yet the Court of Australia overturned the original decision, and the case is still pending up to this publication date.
