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NZ High Court kicks Thaler AI inventor bid for touch, passes ball to legislature

Further to our earlier article here, the High Court of New Zealand has dismissed an appeal by Stephen Thaler to have his AI system DABUS recognised as the inventor of a patent application under New Zealand law.

The issue has now been widely traversed by Courts around the world, with almost all decisions declining to recognise the possibility of an AI being an inventor under current law.

The New Zealand decision sets out a history of patent legislation in New Zealand, focusing on the changes in reference to the word “inventor” over time. Counsel for Thaler argued that the broadened language of the Patents Act 2013, meant that the meaning of inventor under section 9 of the Act, “the actual deviser of the invention” could include AI.

As appropriate for an issue of statutory interpretation such as this, Palmer J referred to section 10 of the Legislation Act 2019, which requires that “the meaning of legislation must be ascertained from its text and in the light of its purpose and its context.”

Palmer J therefore referred to context and purpose of the Patents Act 2013 to hold that an AI was not an inventor for the purposes of the Act.

The decision made strong reference to the consideration of the same issue in Australia and the UK, Palmer J noting that his decision was “consistent with the decisions of the Full Court of the Federal Court of Australia and the Court of Appeal of England and Wales in relation to their Acts, in the context of their developments patent law, which share a common heritage and international influences with New Zealand patent law.” It is noted that an appeal to the UK Supreme Court is scheduled for May 2023, and leave to appeal to the High Court of Australia was declined.

As is often the case with such developments and changes in IP policy, Palmer J was deferential to Parliament, noting it was not “appropriate for the Courts to effectively expand the definition of inventor through statutory interpretation. Such a step is more appropriately reserved, in our constitution, for Parliament.”

With the advent and advancement of AI tools such as the presently popular Chat-GPT, consideration of the implications of AI systems on patents and their inventorship are only likely to increase. This was recognised by the UK government in their recent review of this issue following Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374. Such systems are now already involved in many areas of commerce including drug development. However, for now at least, such systems will not be credited or named as inventors under New Zealand law.