Date of IPHC Decision: January 30, 2025
IPHC Case Number: 2024(Gyo-ko)10006
Tokyo District Court Case Number: 2023(Gyo-u)5001
Date of Tokyo District Court Decision (original judgment): May 16, 2024
Case Type: Suit for Revocation of Administrative Disposition Dismissing a Patent Application
Plaintiff/Patent Applicant: A
Defendant: The Government of Japan
Japanese Patent Application Number: 2020-543051
PCT Application Number: PCT/IB2019/057809
Title of Invention: Food Container and Devices and Methods for Attracting Enhanced Attention
Overview of the court case
Similar to other jurisdictions, it is controversial whether a new invention generated by artificial intelligence (AI) could be granted a patent in Japan and whether AI can be deemed as an “inventor” defined by the Japanese Patent Law. The DABUS case of this article on the subject of AI inventorship is an attempt to deal with this controversy.
In the first instance, the Tokyo District Court handed down its decision on May 16, 2024 on the request of revocation of the Japan Patent Office (JPO) dismissing the patent application on the grounds that a patent inventor must be a human and AI cannot be recognized as an inventor. Subsequently, on January 30, 2025, the Intellectual Property High Court (IPHC) upheld the Tokyo District Court decision and dismissed the plaintiff’s claim in its appeal judgment of the second instance. The IPHC emphasized that “inventor” should be person entitled to obtain a patent and “inventor” defined by the Japanese Patent Law is limited to a natural person. Hence, there is no basis that the invention generated by AI in this case has inventorship. The IPHC also noted that when the current law was introduced, rapid AI development in recent years and invention autonomously generated by AI had not been predicted; and that new framework of legislation should be enacted upon national debate.
The patent application in question was filed to the JPO in 2020 by Dr. Stephen Thaler, an American engineer who created an AI system called “DABUS” (Device for the Autonomous Bootstrapping of Unified Sentience). In its PCT application pertaining to the Japanese patent application, the inventor’s name was described as “DABUS, the invention was autonomously generated by an artificial intelligence.” This application was also filed to the USPTO, EPO, etc. The U.S. District Court for the Eastern District of Virginia, which supported the judgment of the USPTO, stated that “We, too, conclude the Patent Act requires an ‘inventor’ to be a natural person.” Also, EPO dismissed the “DABUS” application due to the provision that an inventor should be “person with legal capacity.” Under the Japanese Patent Law (Article 184-5, paragraph 1, number 2), “inventor” is a natural person and therefore, any name other than the name of a “natural person” is not eligible to be an inventor. The JPO rejected the patent application and ordered the applicant to make amendments to change the inventor’s name to a natural person in accordance with the current Japanese Patent Law. The application was dismissed since the applicant did not comply with the JPO order. In response to the JPO’s decision, the applicant filed a request of revocation of administrative disposition dismissing a patent application to the Tokyo District Court.
In the first instance, the Tokyo District Court declared that it is reasonable to conclude that “inventor” defined by the Japanese Patent Law should be limited to a natural person. According to Article 2, paragraph 1 of the Intellectual Property Basic Act, the term “intellectual property” as used in this Act means invention that is produced through creative activities by human beings. Dismissal of the application by the JPO is in conformity with the law and the current law does not permit any patent applications whose inventor is AI. As such, eligibility of AI as an inventor is denied in Japan along with the US and Europe at present.
Reactions to the court case
There are some commentary to this IPHC case revealing that:
- The current decision discusses point at issue over whether an AI is deemed as an “inventor” under the Japanese Patent Law. This can be considered as demonstrating the limits of creating laws from precedents.
- The scope of this decision is limited to only when AI autonomously generates an invention. Having said that, there could be room for discussion where human generates an invention utilizing AI.
- It is rare that the court of first instance goes so far as to address the theory of legislation.
- One of the grounds for this decision is that from a global point of view, many countries remain discreet with AI inventorship.
- The Minister of State for Science and Technology Policy stated on January 17, 2025 that the government will move forward to consider whether to allow an AI developer to obtain a patent right. The perspective will be laid out in the IP Promotion Plan 2025, which is to be formulated in June 2025.
We should keep a watchful eye for future discussion on AI inventorship.