Yu-June Tseng January 2 2023 Can an AI system be listed as the inventor on a patent application? Lee and Li Attorneys at Law | Intellectual Property - Taiwan Yu-June Tseng Intellectual Property FactsIPCCSupreme Administrative CourtCommentBy imitating human thinking, cognition, learning and computing, artificial intelligence (AI) systems can accomplish specific tasks, including carrying out certain types of research. Whether an AI system can be considered to be an inventor on a Taiwan patent has been widely discussed in the legal profession in recent years. The Supreme Administrative Court answered this question in the negative in a recent decision.(1)FactsThe applicant listed an AI system as an inventor on a patent application. The Taiwan Intellectual Property Office (TIPO) informed the applicant in writing that the patent application was incomplete, since a human inventor had not been listed, and requested the applicant to provide a human inventor.After the applicant failed to provide a human inventor within the specified period, the TIPO dismissed the patent application. Unsatisfied, the applicant filed an administrative appeal. After the Ministry of Economic Affairs rendered an unfavourable administrative appeal decision against the applicant's interests, the applicant subsequently initiated an administrative litigation process with the Intellectual Property and Commercial Court (IPCC).IPCCAccording to the IPCC:Creation is a collective term for the fruits of human mental activity, which may be protected with different types of rights depending on the content and nature of the creation. In respect of the right of attribution, Articles 16, 31 and 83 of the Enforcement Rules of the Patent Act also provide that the application form shall specify the name and nationality of an inventor, a utility model creator, or a designer when a patent application is filed. Also, when the patent application is laid open and when the patent is published by the TIPO, the preceding name and nationality shall be listed in the Patent Application Publication Gazette and the Patent Gazette, respectively. According to the provisions of the relevant laws and regulations in Taiwan, the inventor shall not only be a person who has made substantial contributions to the technical features of the patent application, but also a natural person. Since an artificial intelligence system is regarded as a "thing" under the laws of Taiwan, it is deemed as an object of rights instead of a subject of rights, and is therefore not entitled to enjoy legal capacity and natural personality.(2)Supreme Administrative CourtAffirming the IPCC's opinion, the Supreme Administrative Court further pointed out that an inventor's right of attribution is one of personality rights, so the inventor must be a natural person, which is in line with the legislative intent of the Patent Act and its associated regulations. Where a thing, which is not a natural person, is specified as an inventor in the application documents, the application is not deemed to comply with the statutory forms and processes, but the applicant is still allowed to make corrections in this regard. The specific patent agency shall notify the applicant to provide the corrected application documents within a specified period. If the applicant fails to do so, or the documents are still not completed in full, the application shall be dismissed according to article 17 of the Patent Act.CommentThe Supreme Administrative Court and the IPCC currently hold the same stance on this issue, but it is still worth observing whether judicial opinions change once a breakthrough in the use of AI occurs in the future.For further information on this topic please contact Yu-June Tseng at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected]). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.Endnotes(1) 2022 Shang Zi No. 55.(2) 2021 Xing Zhuan Su Zi No. 3.