Can AI be named an inventor? This question was brought before Taiwan’s Intellectual Property & Commercial Court (the IPC Court) this year, and the judges’ answer was an loud and clear “no” rather than a hesitant “no yet.” Thaler v. Taiwan IP Office (TIPO), 110 Xing Zhuan Su 3, Taiwan’s IPC Court (August 2021). Never had the AI inventorship issue been addressed in a Taiwan court before this case.
Rendered on August 19, 2021, this decision upheld the Taiwan IP Office’s ruling that rejected a Taiwan application filed by Dr. Stephen Thaler based on the EP18275174.3 calling for “Devices and Methods for Attracting Enhanced Attention.” In the application, DABUS, an AI system developed by Dr. Thaler’s team, was named the sole inventor. Dr. Thaler candidly disclosed that “this invention was invented by DABUS which is an artificial intelligence system and the sole inventor. Namely, this invention was not invented by a human inventor.” In the administrative litigation, he further asserted that DABUS conceived this invention independently.
Although Taiwan’s Patent Law does not explicitly preclude a non-human inventor, the IPC Court decision cited some of the most important bylaws to affirm this rule. First, it is stated in the Patent Examination Guidelines that an inventor must be a human, or a natural person in legal term. Further, the Enforcement Rules of the Patent Law requires disclosure of an inventor’s name and citizenship/nationality in a patent application; this formality requirement was found by the Court to be aiming at protecting human inventors’ personality rights.
Turning to the legislative intent and the policy of the Patent Law, the IPC Court averred that the patent system is designed for the encouragement and protection of the fruits of human’s mental activities. In light of this, an inventor can only refer to a human who completes an invention through “(human) mental creation.” AI is not a human, and not even a juridical person. It is merely a “thing” and a thing can only be an object rather than a holder of rights, the Court said.
As the court hearings for this case ended on July 29, 2021 and no new evidence was allowed thereafter, the Court had no chance to consider Dr. Thaler’s recent win in Australia, where on July 30 he successfully convinced the Australian Federal Court that AIs are eligible inventors. However, 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 necessarily linked to a human being.
Another interesting point is that, as Taiwan’s Copyright Law provides, an author can be a juridical person, like a corporation, yet juridical persons are not human beings hence not qualified inventors in the realm of patent law. This inconsistency appears more challenging when authors are compared with designers. Under the practices and bylaws of the Patent Law which governs designs, only a human can be a designer, but a design is sometimes also a copyrightable work and they share the same creator. 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 unaddressed, possibly because this argument, even if it held true, could at best lead to the conclusion that a juridical person can be named an inventor, but AIs are not juridical persons.
Whatever the outcome, Dr. Thaler and his team has displayed remarkable spirit of fair play in this case by voluntarily and unambiguously revealing DABUS’s AI identity and its contribution in the invention. In a Taiwanese patent application, inventor information required by TIPO is limited to an inventor’s citizenship/nationality, name, and Chinese translated name only. No disclosure beyond this point is required, and no submission of an assignment from the inventor is needed unless and until the applicant’s standing is challenged, yet only a person asserting to be the “genuine applicant” is allowed to make this challenge. When all these facts are put together, it becomes 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 might turn out then 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.
All in all, what can be said of the current legal system of Taiwan is that even if an AI passes the Turing test now, it may still have difficulty passing the inventor test. Yet the tricky part is that an AI disguised as a human is not altogether unlikely to pass at least the formality examination unnoticed in a patent application, and this is something the IP community should all watch out whichever stand we take in the question of whether an AI can be named an inventor.