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In the name of AI

24 Mar 2023

| Author: Nadia Sussman

Appeal against decision of Assistant Commissioner of Patents – Patents Act 2013, ss 3, 5(1), 9, 22, 71, 73 – Patents Regulations 2014, reg 50 – artificial intelligence – whether “inventor” must be natural person – purposive interpretation, Legislation Act 2019, ss 10 and 11 – legislative history – developments in other jurisdictions – constitutional role of judicial branch – 

Thaler v Commissioner of Patents [2023] NZHC 554 (Palmer J) 

This is the first High Court case to consider whether an artificial intelligence (AI) can be named as an inventor under the Patents Act 2013.

Under the Act, a patent for an invention may be granted only to a person who is the inventor or is someone deriving title from the inventor (or the personal representative where deceased).  “Inventor” is defined as “the actual deviser of the invention”.

The appellant, Dr Stephen Thaler, claims an AI he created, ‘DABUS’, is appropriately designated the inventor of a new type of food container. He has applied for patents to this effect in the United Kingdom, Australia, the United States and New Zealand.

The courts of each foreign jurisdiction have found against his respective applications. The UK government conducted a review of artificial intelligence and intellectual property law following the first instance UK decision. It has no plans to change UK patent law at present, noting “most respondents [to its consultation] felt that AI is not yet advanced enough to invent without human intervention”.

Per Thaler, DABUS was “trained with general information from various knowledge domains”.  It then invented the container through “unsupervised generative learning without contributions by [him] or any other person”.  While the commissioner disagreed with these assertions, the factual position was not at issue. Appeal confined to statutory interpretation.

Legal principles

The meaning of the Act is to be ascertained from its text and in the light of its purpose and context, s 10 Legislation Act 2019 and Commerce Commission v Fonterra Co-Operative Group [2007] NZSC 36 – legislation applies to circumstances as they arise, s 11 Legislation Act 2019 – the text of the Act is strictly ambivalent but leaning toward limiting “inventor” to natural persons – recourse to ordinary language use less available in novel areas – legislative context and purpose of Act non-determinative – legislative history of Act persuasive – New Zealand patent legislation from 1860 – 2013 predicated on an “inventor” being a natural person – nothing in the legislative history indicates Parliament intended the 2013 amendments to expand the meaning of  “inventor” – purpose of 2013 amendments was to prevent mere importers from qualifying as inventors – purposes of the Act as whole include to “ensure that New Zealand’s patent legislation takes account of developments in the patent systems of other countries”, s 3(e) – the courts should not expand the meaning of “inventor” through statutory interpretation.

HeldAppeal dismissed.  Only a natural person can fall within the meaning of inventor under the Patents Act 2013.

Nadia Sussman is a senior tutor and research assistant at the University of Auckland Faculty of Law

Thaler v Commissioner of Patents

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