Last year, patent applications filed by Dr Stephen Thaler naming an artificial intelligence known as ‘Device for Autonomous Bootstrapping of Unified Sentience‘ (DABUS) as the inventor made news headlines around the world. As reported earlier, in a surprising move the Australian Federal Court recognised DABUS as an inventor. This decision is currently on appeal.
In the latest instalment, the Intellectual Property Office of New Zealand (IPONZ) has rejected Dr Thaler’s application naming DABUS as the inventor. The Assistant Commissioner determined that DABUS could not be considered an inventor because it is not a natural person as required by legislation:
The artificial intelligence, being the machine identified as DABUS, is not a natural person, or what amounts to the same thing, an individual.
The term “inventor” as used in and as in the scheme of the Patents Act 2013 (the Act) refers only to a natural person, an individual. That inventors fall within the class of natural human persons is intrinsic to the proper construction of the Act. If the legislators had intended to allow granting of patents in New Zealand for inventions devised solely by non-humans such as artificial intelligences, or life forms other than human beings they would have drafted the Act to accommodate these possibilities specifically and explicitly. They did not do so. It is not appropriate for the Commissioner to ignore this fact and decide a case as though they should have done so.
Consequently, it was deemed that no inventor was identified for the application. As any entitlement to the grant of a patent must ultimately be derived from the inventor, Dr Thaler could not establish his entitlement to the grant of a patent from the application. The application was therefore marked off as void.
Who may be granted a patent?
Section 22 of the NZ Patents Act sets out an exhaustive list of who may be granted a patent. The Assistant Commissioner found that it would not be appropriate to read ‘the inventor’ of s22(1)(b) as referring to anything or anyone other than ‘the inventor’ mentioned in s22(1)(a), who must be a person according to the introduction of s22(1). Accordingly, it was determined that s22 leaves no room for a patent to be granted to a non-person.
In contrast, when the equivalent Section 15 under the Australian Patents Act was considered in the Australian Federal Court, Beech J was of the opinion that whilst the Act stipulates rights or consequences for an inventor who is a person in some places, it does not logically entail that an inventor can only be a person for all purposes. The Applicant argued that similarly to the Australian Act, the NZ Act does not expressly prohibit non-humans, such as AI, being an inventor.
The Assistant Commissioner rejected this argument, stating:
These opinions are ill-founded if the Act is read and interpreted in context. The Act was drafted, and has always been applied, on the assumption that an “inventor” is a human being. As Mr Smith has explained, several sections of the Act do explicitly refer to the inventor as being a human being, and in those sections which do not, a consistent reading is incompatible with the inventor being non-human. The term “inventor” as used in the Act refers only to a natural person, an individual. That inventors fall within the class of natural human persons is intrinsic to the proper construction of the Act. If the legislators had intended to allow granting of patents in New Zealand for inventions devised solely by non-humans such as artificial intelligences, or life forms other than human beings, they would have drafted the Act to accommodate these possibilities specifically and explicitly. They did not do so. It would be inappropriate for the Commissioner to ignore this fact and decide a case as though they should have done so.
What’s next?
This IPONZ decision may be appealed to the High Court of New Zealand. The Australian case will be heard by Full Federal Court on 9 February 2022, and we expect that a judgement may be handed down some time this year.
