Dr. Steven Thaler filed for an invention patent application in November 2019 to designate an AI system known as DABUS as an inventor. The Taiwan IP Office (“TIPO”) and the Ministry of Economic Affairs rejected the application; this was followed by the applicant’s filing of a lawsuit. In August 2021, the Taiwan Intellectual Property and Commercial Court (“IPC Court”) ruled in a judgment to uphold TIPO’s decision and dismissed the case.[1] Dr. Thaler appealed. In July 2022, the Supreme Administrative Court (“SAC”) maintained the trial judgment ruling that an AI system is not entitled to inventorship.[2]

  While the SAC agreed with all of the IPC Court’s reasoning and conclusions, it nevertheless sought to address several points of emphasis in its appellate judgment.

  The focus of the SAC’s analysis was the definition of an inventor. The SAC believes that an inventor is one who actually engages in research and creative activity. The inventor has to make a substantive contribution to the technical features claimed in the patent application. The inventor is the figure who gives birth to a concept dedicated to solving a problem or achieving a technical effect, and the inventor suggests a particular technical means of accomplishing this. Furthermore, an inventor enjoys the right of paternity. Hence, an inventor must be a natural person.

  The definition of an inventor can also be found in the Patent Examination Guidelines. The Guidelines state repeatedly - over a number of chapters - that an inventor must be a natural person. The SAC stressed that since the Guidelines were promulgated in accordance with the legislative objectives of the Patent Act, such a definition - that is, one that accepts only a natural person as the inventor—was deemed to be correct.

  The second section of the SAC’s analysis concerned the failure of the applicant to meet formality obligations. The Patent Act and its Implementation Rules require specific sufficiency of contents and information in order to have a patent application successfully docketed; this includes the inventor’s name and nationality on the application form. However, in the present case, only the English name was entered in the field - as “NONE, DABUS” - and the Chinese name and nationality were not given. The applicant was leniently given a designated time period of more than six months to correct the mistake, before TIPO finally rejected the case. TIPO’s decision was made in compliance with the law.

  Lastly, the SAC addressed the issue of international comparative law. On the one hand, among all countries in which the applicant filed patent applications, there was only one country that accepted DABUS as the inventor. On the other hand, another country’s grounds for accepting the AI system as the inventor does not justify that Taiwan has to follow mutatis mutandis; in any case, Taiwan may have a different legal basis. The SAC concluded that in Taiwan, DABUS is an object to be dominated or possessed rather than a subject which may enjoy rights and bear liabilities.

  The case was so affirmed.

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