DABUS was Denied Inventorship by Taiwan IPC Court
DABUS, an acronym standing for “device for the autonomous bootstrapping of unified sentience,” is a complex artificial intelligence (“AI”) system developed by Imagination Engines Inc.’s founder Dr. Stephen Thaler. Dr. Thaler and his team filed patent applications in many countries, claiming DABUS to have conceived the inventions in question. Indeed, Dr. Thaler named DABUS as an inventor in patent applications.
Most of the patent authorities which received Dr. Thaler’s cases refused to grant inventorship to an AI system. Some rejected cases were brought to the courts. Recently, the courts of South Africa and Australia recognized the inventorship of the AI system, while the UK court rejected it. The question of whether a non-human being can claim inventorship has sparked a huge controversy and has become one of the key topics of debate among the various legal communities of the world.
On November 5, 2019, Dr. Thaler filed a patent application with the Taiwan IP Office (TIPO) titled “Devices and Methods for Attracting Enhanced Attention”. Six days later, TIPO rejected the case in an Office action on the grounds of the application form being incomplete. Thaler responded, but the inventor as stated on the form remained as DABUS, the AI system. TIPO concluded the case by dismissing the application. Dr. Thaler raised an administrative appeal but failed. He then filed a lawsuit against TIPO, taking the case to the Intellectual Property and Commercial Court (IPCC).
The IPCC handed down a judgement on August 19, 2021, which was published online on September 1. To briefly summarize, the IPCC upheld TIPO’s decision by ruling that an AI system was not entitled to inventorship. There were three main inquiries and answers which together constituted the basis of the court’s judgement to uphold TIPO’s dismissal of Dr. Thaler’s application.
1. Does an inventor have to be a human?
Although there is no specific provison in the Patent Act that the entity filing for a patent must be a natural person, the interpretation of the Patent Act (the “Interpretation”) clearly stipulates that the definition of an inventor should be limited to a natural person. The Interpretation goes on to say that an inventor is a person who actually carries out research and creation; since the right of paternity is a moral right for an individual, an inventor has to be a natural person. Furthermore, the inventor is the one who made a substantive contribution to technical features as claimed. “The one who made a substantive contribution” refers to the person engaging in intellectually creative activities for the purpose of producing an invention. Such a person establishes an inventive concept of the technical effect, and the technical solution for resolving a particular technical problem, as well as proposing the specific technical means to achieve said inventive concept. Furthermore, the Patent Examination Guidelines also define an inventor as a natural person, and require that all inventors’ names be included on the application form for filing when more than one person has collaborated in an invention.
As can be seen from both the Interpretation of the Patent Act and the Patent Examination Guidelines, an inventor is not only a person who engages in creative activities to devise the claimed technical features but is also one who makes a substantive contribution to bringing about an inventive concept. The IPCC therefore concluded that an inventor should be a natural person.
2. Is AI a person defined by the law?
The Civil Code is the fundamental source of the law to define the legal status of a person. “The legal capacity of a person commences from the moment of live birth and terminates at death.” Such legal capacity of a person is not waivable and includes, among other things, the entitlement to enjoy moral rights. To be named in association with a patent as an inventor is one of the inalienable moral rights. When a moral right is infringed, one is entitled to relevant legal remedies.
However, in order to exercise moral rights and/or to request remedies, necessary actions should be taken to fully express the intention to realize a particular legal effect (the declaration of intent, or Willenserklärung, under the German law). The question is whether DABUS in the present case has the capability to perform an act and express an intention. The judgment cited the following interesting dialog between the Chief Judge and the plaintiff’s attorney, which may shed some light on the question:
Chief Judge: How do you define a “person”?
Plaintiff’s Attorney: Under the Civil Code, a person is either a natural person or a legal entity.
Chief Judge: If DABUS reaches out to you to retain you in this lawsuit, would you agree to be retained as its representative? To whom would you charge the retainer fees? The reason I ask is that in a similar situation where a company hires a lawyer, the lawyer would know whom specifically he or she should report to with any developments.
Plaintiff’s Attorney: The main question should be separated into different sub-questions, and the first sub-question should be “whether DABUS can file for a patent.”
Chief Judge: No. You should firstly answer the question “whether DABUS is a person” before moving on to the question about applying for a patent. How come you were not being hired by DABUS in the first place?
Plaintiff’s Attorney: As I previously explained, under the definitions of the law, DABUS is neither a natural person nor a legal entity. I cannot be retained by it. However, the question of whether DABUS should possess legal capacity as well as the right to apply for a patent remains worthy of more deliberation.
In the light of the above responses, the court concluded that the plaintiff must accept that DABUS is not a person under the law.
3. Is the dismissal of the present application attributable to the applicant?
As per Article 17 (1) of the Patent Act, where a person filing a patent application or taking other proceedings in connection with patent-related matters has failed to comply within a statutory or specified time period, the application filed or the proceeding initiated shall be dismissed.
On the application forms for the present case, the column for “Inventor’s English Name” was filled as “NONE, DABUS.” The columns for “Inventor’s Nationality” and “Chinese Name” were left blank. In response to TIPO’s Office action, the applicant insisted that the present invention was made solely by the inventor DABUS, who is an AI system; in other words, the present invention was not made by a human inventor. There then came a second Office action to urge the applicant to correct the name of the inventor (who must be a “person”) within a designated period of time. The applicant failed to take the necessary steps to make corrections within the designated time period. TIPO therefore dismissed the case. As per the above findings, the court reasoned that the lapse of time to correct the application was attributable to the applicant. The court ruled that TIPO’s decision to dismiss the case was lawful.
The case was judged accordingly, but was appealable.
During the trial, the court delivered its specific observations on comparative laws and different perspectives. At one point in proceedings, the plaintiff argued that since an AI-made invention is subject to protection in other countries, so should it be in Taiwan. However, the court stressed that in view of the opinions and decisions of some foreign counterpart patent authorities, most countries - with the exception of South Africa - have unanimously rejected or dismissed cases involving the inventorship of AI (at least at the time when this judgement was written). The court found that in the case of the invention in question, DABUS was recognized under Taiwanese law as an “object” that can be dominated or possessed by another. DABUS cannot be the “subject” of rights so it does not enjoy any legal capacity.
Comment
The size of this first-instance judgment was rather small, consisting of only 10 pages. It did not involve particularly complex disputes, groundbreaking analysis, or out-of-the-box reasoning. The conclusion was seemly quite predictable by many. However, this Taiwanese judgement came quickly, at the beginning of September 2021; it is believed to be the fourth court in the world to have made such a judgment, after the United Kingdom, South Africa, and Australia. Regardless of how this case will develop in the context of a possible appeal and what position the Taiwanese courts will ultimately take, this trial judgment nonetheless significantly marks the Taiwan judicial branch’s first determinative ruling on this controversial, hotly contested issue, which is at the forefront of discussion among patent communities globally.
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