Concerning the plaintiff's application for an invention asserted to be invented by DABUS that was dismissed by the JPO, the IP High Court determined that the dismissal by the JPO was justified since the invention was not invented by a human being and that the name of the inventor in the domestic document should be that of a human being (IP High Court, January 30, 2025 [Case No.: 2024 (Gyo-Ko) No. 10006]).
Background
The plaintiff (the “Plaintiff”) filed a PCT international patent application for “Food containers and devices and methods for alerting and attracting people's attention to them” (the “Invention”) and designated Japan (App. No. 2020-540351, the Application). In the domestic procedure, the Plaintiff listed “DABUS, an artificial intelligence that has autonomously invented this Invention” in the column of the name of the inventor.
The Commissioner of the JPO ordered the Plaintiff to make an amendment, stating that only a human being can be listed as an inventor in the domestic document. However, the Plaintiff submitted a written statement stating that there was no provision prohibiting AI from being listed as an inventor, so there was no need to respond to the amendment. Since the Plaintiff did not respond by the deadline, the JPO dismissed the Application. The Plaintiff filed a request for re-examination, but the Commissioner of the JPO refused this request, and the Plaintiff brought this case to court.
As the first instance court found the JPO's decision to be appropriate, the Plaintiff appealed to the IP High Court. The points of contention are (i) whether “inventions” protected by patent rights are limited to those made by human beings, and (ii) whether the “inventor's name” is a required entry in the domestic documents for domestic procedures for international patent applications.
Judgment
1.Regarding the requirements for inventors
Under the Patent Act, the occurrence of the “right to obtain a patent” is stipulated in the main clause of Article 29, Paragraph 1, which provides that “a person who has made an invention that can be used for industrial purposes may obtain a patent for the invention”. In addition, Article 35, Paragraph 3 of the Patent Act stipulates exceptions to the rule that the right to obtain a patent for an employee's work-related invention belongs to the employer, in certain cases. Other than this, there are no other provisions that stipulate the occurrence of the “right to obtain a patent” or the person to whom the right belongs. Therefore, under the Patent Act, the “right to obtain a patent” is a right that only arises when the inventor is a human being.
The Plaintiff argued that at the time the Patent Act was enacted, the concept of AI-generated inventions and the legal issues associated with them did not exist, so the fact that the Patent Act does not include provisions related to AI-generated inventions cannot be a reason to deny the protection of AI-generated inventions and in light of the purpose of the Patent Act, which is to contribute to the development of industry, the Patent Act should be interpreted and applied in a way that allows for as much protection of AI-generated inventions as possible.
However, the design of patent rights systems, including aspects of international cooperation, is an issue that should be discussed from the perspective of a country's industrial policy, and it is an issue that requires discussion for the purpose of legislation based on extensive and careful discussion of the various effects that AI-generated inventions will have on society and it is difficult to determine this through the interpretation of the current law. The problems raised by the Plaintiff, such as the harmful effects of limiting inventors to human beings, are also issues that should be considered in the debate on these legislative policies, and simply interpreting the law to make AI-generated inventions subject to patent rights under the current system would not immediately lead to the objective of the Patent Act, which is “to encourage inventions and thereby contribute to the development of the industry”.
Whether the “inventor's name” is a required entry in the domestic documents
The Patent Act stipulates that, in the domestic procedures for international patent applications, a domestic document stating the name of the inventor must be submitted, and also stipulates that if this is not complied with, the application may be rejected.
The Plaintiff argued that if the inventor's name is made a necessary matter to be stated in an application for AI-generated inventions, there is a problem that will lead to an increase in applications that list a human being who is not the inventor as the inventor. Furthermore, the Plaintiff argued that there is a problem with a patent for AI-generated inventions related to such a fraudulent application not being invalidated because there is no interested party who would be a Demandant for an invalidation trial on the grounds of fraud.
These issues raised by the Plaintiff can be said to be one of the problems with the current law that does not assume the existence of AI-generated inventions, but they cannot be resolved by interpreting the inventor's name as not being a necessary matter to be stated. As mentioned above, the issues raised by the Plaintiff are issues that should be considered in the discussion of the legislative policy regarding AI-generated inventions, and they cannot be used as grounds for interpreting the current law as not requiring the inventor's name to be stated.
Comments
This is a case regarding AI-generated inventions invented by DABUS developed by Stephan Thaler. As described above, the IP High Court ruled that the inventor refers to a human being and AI cannot be an inventor under the Patent Act. This conclusion seems to be appropriate as an interpretation of the Japanese Patent Act.
The decision pointed out that it should be necessary to consider the Patent system for how we should handle the inventions invented by AI moving forward.
In the first place, the purpose of the Japanese Patent Act is to encourage inventions through promoting the protection and utilization of inventions, and thereby contribute to the development of the industry. In this regard, if inventions that spent a significant amount of time and effort to create are not protected by the Patent Act, they can easily be imitated by third parties and this will discourage inventors and make it harder for new inventions to be created.
However, AI can continue to make new inventions regardless of whether or not the inventions it creates are protected. Considering the above, it can be said that there is no need to grant patent rights to AI as an inventor under the Patent Act.
On the other hand, there is no doubt that AI will continue to make a significant contribution to technological improvements and, consequently, industrial development.
This decision indicates that it is important to consider the legal system governing AI through legislation rather than through legal interpretation. Currently, the JPO is conducting research and discussions on the Patent Act related to AI and this case will have an impact on the discussions. We will keep monitoring the developments on the AI patent legal system going further.
Written by: Mr. Kota Yamada (Attorney at Law)