TOPICS

“Food Container and Devices and Methods for Attracting Enhanced Attention”

Overview:

The case involves a request to revoke a decision to dismiss the application. The court dismissed the plaintiff’s request.

▶Link to a summary and full text of the trial decision (Japanese)

Main Issue:

Whether “inventions” under patent law are limited to those by natural persons.

Court’s Ruling:

It is reasonable to interpret that the Basic Act on Intellectual Property stipulates inventions to be created by natural persons as a fundamental matter regarding the creation of patents and other intellectual property.

In view of Patent Act Article 36(1)(ii) requires that the name of the inventor be indicated, whereas Article 36(1)(i) requires that a personal name or designation of an entity be indicated for the patent applicant, thus meaning that “name” as used above refers literally to the name of a natural person, and these stipulations can be understood as presuming the inventor to be a natural person. Additionally, Patent Act Article 66 stipulates that a patent right is established by registration, and Article 29(1) stipulates that one who has invented is entitled to receive a patent for said invention. Therefore, as AI has no legal personality, it is reasonable to interpret the “one who has invented” mentioned above to mean one that is not AI, and that AI cannot be the subject of the right to receive a patent, as such must be a natural person.

…The design for systems regarding AI-generated inventions should be entrusted to democratic processes involving national debate, in view of the socio-economic structure and the like brought about by AI, and should be determined through broad legislative consideration as to what constitutes a systematic and rational framework, also in harmony with other AI-related systems. From a global perspective, although differences exist in each country between legal systems and specific provisions regarding the concepts of invention, it is clear from the evidence and overall substance of the arguments presented in this case that many countries are cautious in immediately interpreting “inventor” under their patent laws to include AI.

Taking all these circumstances into consideration, it is reasonable to interpret the “inventor” as stipulated in the Japanese Patent Act to be limited to natural persons.

Therefore, notwithstanding the provisions of Patent Act Article 184quinquies(1)(ii), the fact that the plaintiff did not indicate the name of the inventor but instead indicated “DABUS, the invention was autonomously generated by an artificial intelligence” as the inventor, it was lawful for the original administrative body to order amendment based on Article 184quinquies(2)(iii), and render the present disposition based on Patent Act Article 184quinquies(3).

Comments:

The plaintiff argued that “unlike those of some foreign countries, the Japanese Patent Act does not have provisions that limit the subject entitled to receive a patent to the inventor, and the fact that AI inventions were not anticipated at the time the Patent Act was enacted does not constitute a reason to deny protection for AI inventions.” The court did not accept the plaintiff’s argument, however, finding that “it is difficult to establish inventors and the like of inventions involving AI, within the framework of current patent law, which was designed presuming natural persons.”

Kazuyuki YOSHIZUMI