Introduction

A recent High Court decision in Thaler v Commissioner of Patents⁽¹⁾ held that an artificial intelligence (AI) system is not an "inventor" so cannot be the owner of a patent under New Zealand's Patents Act 2013 (the 2013 Act). 

The issue arose as a result of "test case" proceedings pursued by Dr Stephen Thaler. Thaler developed an AI system referred to as the "Device for the Autonomous Bootstrapping of Unified Sentience" (Dabus) which, in turn, produced a design for an interlocking food container. Thaler applied to New Zealand's commissioner of patents to acquire a patent for the container, naming Dabus as the inventor. The commissioner rejected the application on the grounds that only a natural person can be an "inventor" for the purposes of the 2013 Act. Thaler appealed this decision to the High Court.⁽²⁾

The New Zealand application (and proceedings) was part of a global campaign by Thaler to test the application of existing patent law to AI across various jurisdictions. By the time of this proceeding, several courts in other countries had decided that AI could not be the inventor named on patents.⁽³⁾

 

 

Facts

Thaler relied on a change to the definition of "inventor" in the 2013 Act, which replaced "the person" with "actual and first deviser". Thaler argued that the new legislative definition was "person independent". While the purpose of amending the definition was to prevent importers from qualifying as inventors, Thaler argued that, as now defined, an "inventor" could include non-humans and still be consistent with the intention of the legislation to encourage and support innovation.⁽⁴⁾ Alternatively, Thaler requested that he be permitted to amend the application to identify himself as the inventor with a derived title because "the invention was autonomously generated by the actual deviser of the invention, DARBUS [sic], which was invented by Dr Thaler".⁽⁵⁾

The commissioner argued that the change in definition of "inventor" in the 2013 Act did not indicate that Parliament had intended to remove the requirement that an inventor be a natural person, and that the legislative scheme required personhood.

 

 

Decision

Palmer J approached the issue solely as a question of statutory interpretation, avoiding discussion on the policy and legal implications arising from the exponential development of AI. Applying section 10 of the Legislation Act 2019, the meaning of "inventor" was ascertained to have regard for the purpose of the 2013 Act and the immediate and general legislative context.⁽⁶⁾

The Court acknowledged that there was an apparent disjunct in the 2013 Act, because it required that the "applicant" for a patent be a person but did not expressly require that the "inventor" also be a person. In contrast, previous legislation had referred to the personhood of the inventor, as did regulations that required details such as name, address and nationality.

Palmer J reviewed the history of New Zealand patent legislation. Overall, the legislative history "lean[ed] in favour" of requiring inventors to be natural persons.⁽⁷⁾ Perhaps unsurprisingly, neither the parliamentary debate nor the legislative history surrounding the amended definition of "inventor" in the 2013 Act explicitly addressed whether an inventor must be a natural person, or indicated that the purpose of redefining "inventor" was to allow for patentable AI inventions. To the contrary, the parliamentary bills and explanatory notes to the 2013 Act had referred to patents being granted to "a person".

For these reasons, the Court was not satisfied that it was appropriate to apply statutory interpretation principles to extend patent protections directly to non-natural AI in circumstances where there was no clear evidence that this had been Parliament's intention.⁽⁸⁾

 

 

Comment

The High Court's decision on the meaning of "inventor" (and, therefore, the ability for AI to own patents) is consistent with the approach taken by most IP offices and courts internationally.⁽⁹⁾ It is notable, however, that the New Zealand court explicitly left unresolved the issue of whether Thaler, as the developer of the Dabus tool, could either have been personally named as the inventor of Dabus' container, or derive title to the invention from Dabus. So long as these issues remain unresolved, the ability to patent AI generated inventions in New Zealand will remain unclear, although the default position appears to be that AI inventions are not patentable.

The past four years have seen major leaps in the quality and accessibility of AI tools, most prominently the 2022 releases of image generator DALL-E 2 and text generator ChatGPT.⁽¹⁰⁾ AI tools are now being used to create intellectual property for mainstream commerce. For example, music group Linkin Park has used the tools in two music videos and Calvin Klein controversially used AIgenerated models in a recent advertising campaign.⁽¹¹⁾ These AI tools rely (in various ways) on extrapolating information drawn from large underlying datasets and comparing the extrapolations with the original data to create something that is arguably "new". For example, an AI tool might generate a picture of a politician's face by iterative comparison of its creations against a database of real pictures of that politician's face.

The fast-paced emergence of AI technology creates significant new challenges for copyright, patent and broader IP law. It is technology that was probably not even contemplated 10 years ago when New Zealand's Patent Act 2013 was passed. The potential for the nonhuman creation of new intellectual property is huge, but so is the potential for widespread infringement of IP rights, especially given the vast size of the underlying datasets that AI tools use. Regardless of whether this High Court decision is appealed, these are complex issues of both legal and moral significance for which the existing legal frameworks may not be suitable. It is an area where both statutory intervention and appellate level scrutiny are inevitable.

 

 

Endnotes

⁽¹⁾ [2023] NZHC 554.
⁽²⁾ At [6].
⁽³⁾ The UK Court of Appeal, the Federal Court of Australia and a district judge in Eastern Virginia had each held for slightly differen reasons that an "inventor" under the equivalent legislation must be a person.
⁽⁴⁾ At [22].
⁽⁵⁾ At [22(e)].
⁽⁶⁾ At [25].
⁽⁷⁾ At [28]
⁽⁸⁾ At [33].
⁽⁹⁾ Relevant court cases:

• Thaler v Commissioner of Patents [2021] FCA 879;
• Commissioner of Patents v Thaler [2022] FCAFC 62, (2022) 401 ALR 551;
• Thaler v Comptroller General of Patents Trade Marks and Designs [2020] EWHC 2412 (Pat); and
• Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374. The South African patent office granted DABUS the patent in July 2021.

⁽¹⁰⁾ See:

• ZDNet, "Nvidia GauGAN takes rough sketches and creates 'photo-realistic' landscape images", Chris Duckett, 18 March 2019;
• Tokenized, "DALL-E 2 Release Date and Timeline", Chrstian Heidorn, 3 April 2023; and
• MIT Technology Review, "ChatGPT is everywhere. Here's where it came from", Will Douglas Heaven, 8 February 2023.

⁽¹¹⁾ See:

• The Chainsaw, "Linkin Park burst into 2023 with a new music video generated entirely by AI", Tom Mitchelhill, 13 February 2023. It should be noted that the video was not generated entirely by AI, as the title suggests. Existing footage, augmented by AI, is used alongside AI generated footage; and
• The Guardian, "Computer-generated inclusivity: fashion turns to 'diverse' AI models", Alaina Demopoulous, 3 April 2023.