Tokyo District Court holds that only a natural person can be an inventor under Japan's Patent Act

2024-05-16Japan

Tokyo District Court, 40th Civil Division, judgment of 16 May 2024, Reiwa 5 (Gyo-U) No. 5001 (Nakajima, presiding), dismissing an action to revoke the Japan Patent Office's dismissal of Japanese Patent Application No. 2020-543051 (national phase of PCT/IB2019/057809)

Stephen Thaler entered the national phase in Japan of international application PCT/IB2019/057809 and named as inventor DABUS, described as an artificial intelligence that invented autonomously. The Japan Patent Office ordered him to name a natural person, and when he did not, the Commissioner dismissed the application on October 13, 2021 under Article 184-5(3) of the Patent Act. Thaler sued to revoke the dismissal, and the Tokyo District Court, 40th Civil Division, with Judge Nakajima presiding, dismissed the action, holding that the "inventor" under the Patent Act is limited to natural persons. The court reasoned that Article 36(1) requires the inventor's name, a term that ordinarily refers to a natural person, and that an artificial intelligence has no legal personality and cannot hold the right to obtain a patent under Article 29(1). It added that there would be no legal basis for choosing which party connected with an artificial intelligence to name, and that the person-skilled-in-the-art standard, premised on human ability, should not be applied directly to one. The court observed that the term of rights in artificial intelligence inventions could reasonably be designed differently from the current term, and in a closing remark it said that, given the industrial-policy importance of artificial intelligence inventions, Japan is especially expected to study them as a legislative matter and reach a conclusion as quickly as possible.

What it changesJapan now matches the United States, the United Kingdom, the EPO and Australia on the threshold question, so a global filing program can use one inventorship record and name only people. The decision does not say who the human inventor is when a model generated the output. It observed only that the law gives no basis for choosing among the system's software holders, hardware holders and managers, which leaves that question to Japan's ordinary law of inventorship. Applications entering Japan from programs where models contributed should therefore carry the same claim-by-claim record of human contribution that the February 2024 United States guidance calls for. The court's call for legislation, and its suggestion that rights in artificial intelligence inventions could carry a different term, are the signal to watch for any Japanese reform, and a district court judgment does not bind the Intellectual Property High Court, where an appeal would go.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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