Artificial Intelligence Shall Not Be Patent Inventors (Taiwan)

Eddie Shih and Jane Tsai

1. Summary of court judgment

The Intellectual Property and Commercial Court (hereinafter, the “Court”) rendered the judgment 110-Xing-Zhuan-Su-3 on August 19, 2021, holding that the artificial intelligence DABUS shall not be a patent inventor and upholding the decision rendered by the Intellectual Property Office (hereinafter, the “IPO”) which concluded that the invention patent application no. 108140133 entitled “Devices and Methods for Attracting Enhanced Attention” should not be accepted. The arguments rendered in the judgment reasons are provided as follows:

(1) An inventor shall be a natural person: An inventor must be a person who has made a “substantial contribution” to the technical features specified in the patent claims, and the so-called “substantial contribution” refers to the mental creation for the completion of the invention. Therefore, the inventor must be a natural person.

(2) AI is legally not a person: The artificial intelligence DABUS is not a “person” (that is, neither a legal nor a natural person) under the Taiwan law and is unable to externally convey its internal intent (for example, to designate an agent). Therefore, AI should be regarded as an “object” under the Taiwan law.

(3) The application should not be accepted by law: Since the application form did not specify the inventor information that conforms relevant requirements (including the name and nationality) but such nonconformance was not remedied within the time period set forth in the notice, the IPO’s decision to dismiss the application is legally valid pursuant to Article 17, Paragraph 1 of the Patent Law, which provides: “Unless otherwise provided in this 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.”

2. Matters to subsequently observe

This application was filed not only in Taiwan but also in the U.K., Australia, the United States, Europe, and South Africa. For the inventor, it was indicated that “the invention was autonomously generated by an artificial intelligence DABUS.” Currently, only South Africa allowed DABUS to be an inventor, while other countries have rendered decisions to dismiss or reject the application, and Dr. Thaler, the applicant, appealed in all instances.

The courts of first instance in the U.K.[1], Australia[2], and the United States[3] have successively rendered decisions recently, and the Board of Appeal before the European Patent Office has also initiated hearing proceedings. The original decisions to deny an inventor status to DABUS were still upheld by the courts in the U.K. and United States. However, the court in Australia has rendered the first decision that grants an inventor status to DABUS in the world, and the competent authority of Australia has alleged the intent to appeal to the second instance.

The opinion of the court of final instance in each country, including Taiwan, will affect the amendment of the patent laws and relevant patent examination guidelines in various countries, not to mention the development of the issue concerning “whether artificial intelligence can be regarded as a copyright author.” Therefore, this is worthy of continued attention.

[1] Stephen L Thaler v The Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat)

[2] Thaler v Commissioner of Patents [2021] FCA 879

[3] Thaler v. Iancu et al, United States District Court for the Eastern District of Virginia, No. 20-cv-00903