THALER v COMMISSIONER OF PATENTS [2023] NZHC 554

THALER v COMMISSIONER OF PATENTS [2023] NZHC 554 [17 March 2023]IN THE HIGH COURT OF NEW ZEALANDWELLINGTON REGISTRYI TE KŌTI MATUA O AOTEAROATE WHANGANUI-A-TARA ROHECIV-2022-485-118[2023] NZHC 554UNDER the Patents Act 2013IN THE MATTER OF an appeal from a decision of the AssistantCommissioner of Patents in respect ofobjections to acceptance under section 22 ofthe Patents Act 2013 and regulation 50Patents Regulations 2014BETWEEN STEPHEN LEE THALERAppellantAND COMMISSIONER OF PATENTSRespondentHearing: 8 November 2022Appearances: C L Elliott KC for the AppellantS P Connolly and S M Perera for the RespondentJudgment: 17 March 2023JUDGMENT OF PALMER JSolicitorsWoodroffe Lawyers, AucklandCrown Law Office, WellingtonSummary[1] Can an artificial intelligence (AI) be an inventor in New Zealand? DABUS isan AI created and owned by Dr Stephen Thaler. DABUS stands for "Device for theAutonomous Bootstrapping of Unified Sentience". DABUS autonomously created anew type of food container which can be interlocked with others. From 2018, DrThaler applied for patents in the United Kingdom, Australia, the United States, andNew Zealand and named DABUS as the inventor. He maintains it would be factuallyincorrect to view anyone else as the inventor, which would open the patent tochallenge. In New Zealand, the Assistant Commissioner of Patents refused to acceptthe application on the basis that only humans can be inventors. Dr Thaler appeals.The Australian, United Kingdom and United States courts have, so far, similarly foundagainst Dr Thaler's applications in their respective jurisdictions.[2] In New Zealand, the Patents Act 2013 (the 2013 Act) was passed when AI wasknown. The text of s 22 is sufficiently wide to encompass an AI being named as aninventor, unlike previous New Zealand Patent Acts. A person other than the inventorcan be a patent holder. Other provisions of the 2013Act envisage that an inventor is aperson for certain purposes, but those purposes do not necessarily apply here. Thelegal issue depends on the purpose of Parliament in passing the 2013 Act. There isnothing in the legislative history to indicate Parliament intended to open up thepossibility of an AI being an inventor under the 2013 Act. Rather, it is clear thepurpose of its amendment was to prevent importers from qualifying as inventors.Given that clear purpose, I do not consider it is appropriate for the courts to effectivelyexpand the definition of inventor. Such a step is more appropriately reserved, in ourconstitution, for Parliament. In the United Kingdom, after the first instance Courtdecision on Dr Thaler's application, the government decided not to propose expandingthe definition.What happened?[3] In May 2021, Dr Stephen Thaler, from Missouri in the United States, appliedfor a New Zealand patent for an improved food container for liquids. It has fractalwalls, which allows it to interlock with other containers. In the application, hespecified that the inventor was "DABUS, [t]he invention was autonomously generatedby an artificial intelligence". Dr Thaler developed and owned DABUS, whichcomprises interconnected and interacting artificial neural networks. Dr Thaler namedDABUS as the inventor of the food container and recorded his own address as theinventor's address. He provided a notice of entitlement to the invention on the basisthat he derived title to the invention from the inventor "under the principle ofaccession, first possession and/or possessory title".[4] In a statutory declaration of 27 April 2021, Dr Thaler said:1. DABUS autonomously invented the inventions the subject of the presentapplication. That is to say, it created / developed / arrived at the inventionsthrough a process ultimately involving unsupervised generative learningwithout contributions by me or any other person. I do not have expertise ineither container design or light development.2. In terms of what might be termed "input data", DABUS was trained withgeneral information from various knowledge domains.3. Based on this broad-spectrum input data, DABUS used its AI capabilities,including a "self-critiquing" faculty, to independently develop the inventionsthe subject of the present application. This included assessing which of the"nascent" concepts DABUS came up with had the most significance / utilityand hence were worthy of developing further.4. Having done so, DABUS then also went on to identify the inventiveconcepts as being likely to be novel and salient.7. In my view it is therefore correct and accurate to refer to DABUS as the"actual devisor" of the inventions the subject of the application. Indeed, inmy view, it would be incorrect to say that anyone other than DABUS is the"actual devisor" of the inventions.[5] A Principal Patent Examiner raised objections to the naming of the inventorand entitlement to grant the application. Correspondence and submissions ensued. On31 January 2022, the Assistant Commissioner of Patents held, in summary:1Decision and directions1. The artificial intelligence, being the machine identified as DABUS, is nota natural person, or what amounts to the same thing, an individual.21 Re patent application no. 776029 in the name of Stephen L Thaler [2022] NZIPOPAT 2.2 1. The Act refers to a person or persons. According to the context a person is a natural person,which is to say an individual human being, an "individual" for short, or a legal or juridical personsuch as a corporation sole, a body corporate, and an unincorporated body. For example, any oneor more of these persons may apply for a patent under s31.2. The term "inventor" as used in and as in the scheme of the Patents Act2013 (the Act) refers only to a natural person, an individual. Thatinventors fall within the class of natural human persons is intrinsic to theproper construction of the Act. If the legislators had intended to allowgranting of patents in New Zealand for inventions devised solely by non-humans such as artificial intelligences, or life forms other than humanbeings they would have drafted the Act to accommodate thesepossibilities specifically and explicitly. They did not do so. It is notappropriate for the Commissioner to ignore this fact and decide a case asthough they should have done so.3. The "definition" of "inventor" in s5 of the Act is no more than a statementthat for an individual to be an inventor they must have contributed toactually devising the invention, as opposed to importing orcommunicating the invention into New Zealand.4. It follows from [1] and [2] that the artificial intelligence DABUS, whichis not a person, cannot be "an actual devisor of the invention" or inventorunder the Act.5. The application does not include, or is not accompanied by, the name andaddress of any inventor or inventors as required in accordance with r50of the Patents Regulations 2014 (the Regulations).6. It is not possible for Dr Thaler to establish his entitlement to grant of apatent on the application because any entitlement must ultimately bederived from the inventor. No inventor has been identified so noentitlement can be derived. Therefore, in accordance with s22, a patentmust not be granted to Dr Thaler.7. The notice of entitlement does not state the grounds that are valid unders22 on which Dr Thaler is entitled to be granted the patent. Dr Thaler isnot a person mentioned in s22.8. The Applicant has not to date complied with the requirements of the Actand Regulations and by their own admission it would appear that theywould not be able to comply with these requirements. The Applicant hasnot to date filed a notice of entitlement stating valid grounds on whichthe nominated person is entitled to be granted the patent under s22.9. Unless amended to comply with the Act and Regulations, the applicationshould be marked off as void at the expiry of the time period set unders71.2. A machine, and in particular a machine that functions as an artificial intelligence, is not aperson under the law and is not a person as referred to in the Act. All the authorities agree on this.To be clear, the applicant has not asserted that DABUS is a person.3. To date it has been universally understood that only an individual identified as a natural humanperson, or individuals working together, is/are able to devise an invention, or (under earlier patentlaw) to import or communicate an invention from a foreign land and so be named on a patentapplication as inventor or inventors of the invention. There are good reasons for thisunderstanding. Legal or juridical persons such as corporations have never been legally accordedthe capacity to invent so have never been permitted to be named as inventors. So far as I have beenable to verify, no creatures on earth other than human beings ever seem to have invented apatentable invention and we have never received any disclosure of inventions from other worlds.[6] Dr Thaler appeals under s 214 of the 2013 Act. Rule 22.34 of the High CourtRules 2016 provides that an appeal of a Commissioner's decision is conducted by wayof rehearing. He must satisfy me that the Assistant Commissioner's decision waswrong.3 If my opinion is different from the conclusion of the Assistant Commissioner,then I must allow the appeal.4Relevant patent lawLegislative history[7] As Mr Elliott KC says, patent law is known to be arcane. In 1623, in an attemptto curb royal power in issuing letters patents, the Statute of Monopolies (Eng) firstgave statutory expression to patent law. Section 6 made an exception for the "true andfirst inventor". Section 6 of the Statute of Monopolies is still referred to in s 14 of the2013 Act.[8] Section 2 of New Zealand's Patent Act 1860 provided that "any person beingthe originator or discoverer of any new invention or improvement" could apply forletters patent to be granted for the exclusive use of the invention in the Colony.Subsequent Acts all similarly contemplated the true first inventor to be the personeligible to apply for a patent.5[9] The Patents Act 1953 did not include a definition of "inventor" in itsinterpretation section. But:(a) Section 7(1) specified:An application for a patent for an invention may be made by any ofthe following persons, that is to say:(a) By any person claiming to be the true and first inventor of theinvention:3 Austin, Nichols & Co Inc v Stichting Lodestar [2008] 2 NZLR 141 (SC) at [4].4 At [16].5 See: Patents Act 1870, s 5; Patents Act 1883, s 4; Patents, Designs and Trade Marks Act 1889, s6(3); Patents, Designs and Trade-Marks Act 1908, s 5(3); and Patents Design and Trade-MarksAct 1921, s 3(1).(b) By any person being the assignee of the person claiming to be thetrue and first inventor in respect of the right to make such anapplication,–And may be made by that person either alone or jointly with any otherperson.(b) Section 8(2) required:Every application (other than a convention application) shall state thatthe applicant is in possession of the invention and shall name theperson claiming to be the true and first inventor; and where the personso claiming is not the applicant or one of the applicants, theapplication shall contain a declaration that the applicant believes himto be the true and first inventor.(c) Section 23 required the Commissioner, if satisfied "the person" who isclaimed to be the inventor, is the inventor, shall cause "him" to benamed in the patent and in the register of patents, stating:(2) For the purposes of this section the actual deviser of an inventionor a part of an invention shall be deemed to be the inventor,notwithstanding that any other person is for any of the other purposesof this Act treated as the true and first inventor; and no person shallbe deemed to be the inventor of an invention or a part of an inventionby reason only that it was imported by him into New Zealand.[10] Regulation 21 of the Patents Regulations 1954, and Patents Form No 6,required the applicant to state the name, address, and nationality of the inventor.[11] From 2000 to 2013, there was a lengthy law reform process:(a) In 2004, an exposure draft of a Patents Bill was released for publicconsultation. It did not include a general definition of "inventor". Butit did contain provisions relating to the meaning of "inventor" forspecific purposes. So cl 21 provided that a patent could only be grantedto "a person" who is the true and first inventor, derives title from sucha person, or was the personal representative of a deceased person ineither category.(b) In 2005, the Ministry of Economic Development reported to theAssociate Minister of Commerce that a number of submissions hadcommented adversely on the "true and first inventor" concept includedin the Bill. Submitters noted that judicial interpretation of that conceptincluded an importer who had no part in actually devising theinvention.6 Yet, "invention by importation" had been renderedinternationally obsolete by the move to "absolute novelty" standards,which were incorporated in the Bill.7 The Ministry noted that using thewords "true and first inventor" may give the impression that NewZealand grants rights on a "first to invent" as opposed to a "first to file"basis.8 It therefore recommended replacement of the term "true andfirst inventor" by a defined term, "inventor".(c) Those proposals were reflected in the Bill as introduced in 2008 and aspassed in 2013. The Bill's Explanatory Note said, on introduction, thatthe Bill updated the criteria for granting a patent which "more closelyaligns them with the criteria applied in most other countries":9Clause 5 defines a number of terms and expressions used inthe Bill. This includes a definition of inventor. Under the Bill,the inventor is the actual deviser of the invention. The termdoes not include a person who has merely imported theinvention into New Zealand.The 2013 Act[12] The 2013 Act provides, relevantly:3 PurposesThe purposes of this Act are to—(a) provide an efficient and effective patent system that—(i) promotes innovation and economic growth while providing anappropriate balance between the interests of inventors and patentowners and the interests of society as a whole; and(ii) complies with New Zealand's international obligations; and6 Ministry of Economic Development Submissions on Exposure Draft of Patents Bill (27 May 2005)at [14].7 At [15].8 At [16].9 Patents Bill 2008 (235–1) (explanatory note) at 5 and 12.(b) ensure that a patent is granted for an invention only in appropriatecircumstances by—(i) establishing appropriate criteria for the granting of a patent; and(ii) providing for procedures that allow the validity of a patent to betested; and(c) provide greater certainty for patent owners and the users of patentedinventions that patents will be valid after they are granted; and(e) ensure that New Zealand's patent legislation takes account ofdevelopments in the patent systems of other countries; and5 Interpretation(1) In this Act, unless the context otherwise requires,—applicant—(a) means a person who has applied for a patent for an invention; and(b) includes a person in whose favour a direction has been givenunder section 28(2)(b)(i), 129, or 131(1)(a) and the personalrepresentative of a deceased applicantinventor,—(a) in relation to an invention, means the actual deviser of the invention;but(b) in section 9, has the meaning set out in section 9(2)9 Disclosure to be disregarded in certain circumstances(2) For the purposes of this section,—inventor, in relation to an invention,—(a) means the actual deviser of the invention; and(b) includes any owner of the invention at the relevant time22 Who may be granted patent(1) A patent for an invention may only be granted to a person who—(a) is the inventor; or(b) derives title to the invention from the inventor; or(c) is the personal representative of a deceased person mentioned inparagraph (a) or (b).(2) A patent may be granted to a person whether or not the person is a NewZealand citizen.71 Time for putting application in order for acceptance(1) A patent application is void unless, within the prescribed period, theapplicant ensures that—(a) the application and the complete specification comply with therequirements of this Act and of the regulations; and73 Notice of entitlement must be filed before acceptance(1) The applicant must file, in the prescribed manner, a notice stating thegrounds on which the nominated person is entitled to be granted thepatent under section 22—(a) before the expiry of the prescribed period under section 71; or[13] Regulation 50 of the Patent Regulations 2014 requires:50 Application for patent(1) The prescribed manner for making a patent application is as follows:(a) the application must be made in accordance with Part 1; and(b) an application must contain, or be accompanied by, the followinginformation:(i) the name and address of each applicant; and(ii) the nationality or principal place of business of eachapplicant; and(iii) the title of the invention that is the subject of theapplication; and(iv) the name and address of each inventor; and(v) an abstract, if the application is accompanied by acomplete specification.(2) If the name, address, nationality, or principal place of business of anapplicant changes from that notified, the applicant must give theCommissioner a notice of the change as soon as practicable after thechange occurs.[14] Aspects of the 2013 Act and associated 2014 regulations reflect, refer to, andincorporate into New Zealand law the Patent Cooperation Treaty of 1970:(a) Article 4(1)(v) requires "the name and other prescribed data concerningthe inventor" to be furnished in an international application for theprotection of inventions. The Treaty does not explicitly require aninventor to be a person.(b) Article 27(1) of the Treaty provides that "[n]o national law shall requirecompliance with requirements relating to the form or contents of theinternational application different from or additional to those which areprovided for in this Treaty and the Regulations".(c) Rule 4.1(a)(iv), of the regulations made under the Treaty, requires arequest to contain "indications concerning the inventor where thenational law of at least one of the designated States requires that thename of the inventor be furnished at the time of filing a nationalapplication". Rule 4.4 specifies how to indicate the names andaddresses of natural persons and of legal entities. Rule 4.6 provides:4.6 The Inventor(a) Where Rule 4.1(a)(iv) or (c)(i) applies, the request shallindicate the name and address of the inventor or, if thereare several inventors, of each of them.(b) If the applicant is the inventor, the request, in lieu of theindication under paragraph (a), shall contain a statementto that effect.(c) The request may, for different designated States, indicatedifferent persons as inventors where, in this respect, therequirements of the national laws of the designatedStates are not the same. In such a case, the request shallcontain a separate statement for each designated State orgroup of States in which a particular person, or the sameperson, is to be considered the inventor, or in whichparticular persons, or the same persons, are to beconsidered the inventors.Overseas applications and cases[15] Dr Thaler has made parallel patent applications in other jurisdictions.United Kingdom[16] In the United Kingdom, s 7 of the Patents Act 1977 (UK) provides:7 Right to apply for and obtain a patent(1) Any person may make an application for a patent either alone or jointlywith another.(2) A patent for an invention may be granted—(a) primarily to the inventor or joint inventors;(b) in preference to the foregoing, to any person or persons who, byvirtue of any enactment or rule of law, or any foreign law or treatyor international convention, or by virtue of an enforceable termof any agreement entered into with the inventor before themaking of the invention, was or were at the time of the makingof the invention entitled to the whole of the property in it (otherthan equitable interests) in the United Kingdom;(c) in any event, to the successor or successors in title of any personor persons mentioned in paragraph (a) or (b) above or any personso mentioned and the successor or successors in title of anotherperson so mentioned; and to no other person.(3) In this Act "inventor" in relation to an invention means the actualdeviser of the invention and "joint inventor" shall be construedaccordingly.13 Mention of inventor(1) The inventor or joint inventors of an invention shall have a right to bementioned as such in any patent granted for the invention and shall alsohave a right to be so mentioned if possible in any published applicationfor a patent for the invention .(2) Unless he has already given the Patent Office the informationhereinafter mentioned, an applicant for a patent shall file with thePatent Office a statement—(a) identifying the person or persons whom he believes to be theinventor or inventors; [17] In relation to Dr Thaler's application for a patent in the United Kingdom:(a) In December 2019, the Comptroller-General of Patents, Trade Marksand Designs declined Dr Thaler's application. On appeal, in September2020, Marcus Smith J, in the Patents Division of the High Court, upheldthe decision, on the basis that the "actual deviser" in s 7(3), and theconcept of an inventive step, connotes a natural person.10(b) In September 2021, the Court of Appeal refused the appeal, by amajority:11(i) All the judges agreed that only a person can be an "inventor"because of the definition in s 7(3), the wording of s 7(2), and theway the term is used elsewhere in the Act.12(ii) Arnold and Laing LJJ considered the application did not complywith s 13(2) because, on its face, it stated a legal impossibility— that DABUS, a non-person, was the inventor.13(iii) Arnold LJ noted that s 13(1) gave effect to Article 4ter of theParis Convention for the Protection of Intellectual Property1883 (Stockholm Act 1967), conferring a species of moral righton inventors to be identified as the creator of something, andonly persons can have moral rights.14(iv) Laing LJ agreed with Birss LJ that s 13 does not require theComptroller to investigate the factual or legal merits of anapplication, but considered the applicant's statement mustsatisfy the Comptroller that the inventor is a person.1510 Thaler v Comptroller General of Patents Trade Marks and Designs [2020] EWHC 2412 (Pat) at[45].11 Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374.12 At [49]–[54] per Birss LJ, [102] per Laing LJ, and [116] per Arnold LJ.13 At [110] per Laing LJ, and [143] per Arnold LJ.14 At [121].15 At [71] per Birrs LJ, and [109] per Laing LJ.(v) Birss LJ considered Dr Thaler had complied with s 13(2)because he specified who he believed to be the inventor and itis not the Comptroller's statutory role to query or examineapplicants' claims regarding the identity of the inventor.16(c) The United Kingdom government reviewed this and other issues inrelation to AI.17 After consultation, the government concluded:188. For AI-devised inventions we plan no change to UK patent lawnow. Most respondents felt that AI is not yet advanced enough toinvent without human intervention. But we will keep this area of lawunder review to ensure that the UK patent system supports AIinnovation and the use of AI in the UK. We will seek to advance Aiinventorship discussions internationally to support UK economicinterests.(d) The United Kingdom Supreme Court is scheduled to hear an appealfrom the Court of Appeal's decision in May 2023.Australia[18] In Australia, there is no definition of "inventor" in the Patents Act 1990 (Cth).Section 15 provides:15 Who may be granted a patent?(1) Subject to this Act, a patent for an invention may only be granted to aperson who:(a) is the inventor; or(b) would, on the grant of a patent for the invention, be entitled tohave the patent assigned to the person; or(c) derives title to the invention from the inventor or a personmentioned in paragraph (b); or(d) is the legal representative of a deceased person mentioned inparagraph (a), (b) or (c).16 At [68] and [72].17 "Artificial Intelligence and Intellectual Property: copyright and patents" (28 June 2022) UnitedKingdom Intellectual Property Office <www.gov.uk>; and "Artificial Intelligence and IntellectualProperty: copyright and patents: Government response to consultation" (28 June 2022) UnitedKingdom Intellectual Property Office <www.gov.uk>.18 "Artificial Intelligence and Intellectual Property: copyright and patents: Government response toconsultation", above n 8.(2) A patent may be granted to a person whether or not he or she is anAustralian citizen.[19] In relation to Dr Thaler's application for a patent in Australia:(a) In July 2021, Beach J, in the Federal Court of Australia, upheld ajudicial review of the decision by the Deputy Commissioner of Patentsdenying Dr Thaler's application.19 He held that "inventor" has itsordinary meaning as an agent noun, which allows the agent to be aperson or a thing. The term should be subject to flexibility andevolution to allow for non-human inventors, as that is consistent withthe purpose of the Act there, to promote innovation.20 No specificaspect of patent law excludes a non-human inventor.21(b) In April 2022, a Full Court of the Federal Court of Australia overturnedthe Federal Court's decision.22 It discussed the historic connectionbetween the identity of the inventor and the entitlement to apply for apatent.23 It considered the natural reading of s 15, supported by thelegislative history and development of patent law in Australia, was thatpersons eligible for a grant of a patent become entitled through a legalrelationship with the actual inventor who must be a natural person.24The Court considered the question of whether the application had ahuman inventor remained undecided.25 It considered that, while theoutcome was the same as that in the United Kingdom and it agrees withthe reasoning there, the task focusses on the particular statutorylanguage which materially differs from the United Kingdomlegislation.2619 Thaler v Commissioner of Patents [2021] FCA 879.20 At [120]–[124].21 At [64].22 Commissioner of Patents v Thaler [2022] FCAFC 62, (2022) 401 ALR 551.23 At [84]–[100].24 At [98]–[111].25 At [121].26 At [122].(c) On 11 November 2022, the High Court of Australia refused leave toappeal.27United States of America[20] In the United States, § 100 of the Patent Act 35 USC provides "the term'inventor' means the individual or, if a joint invention, the individuals collectively whoinvented or discovered the subject matter of the invention".[21] In September 2021, in Eastern Virginia, District Judge Leonie M Brinkemaheld that a machine cannot be an "inventor" under the Patent Act.28 As the term"individual" and "individuals" were used in the definition of "inventor", the Judgestated the issue turned on whether an AI could be considered an "individual".29 Dueto previous Supreme Court and Federal Court authority that the term "individual"refers to a natural person, the Court held: inventors must be natural persons; Congressdeliberately used personal pronouns adjacent to the term "individual" or "individuals"throughout the Patents Act; and an AI could not be considered an "individual".30Submissions[22] Mr Elliot KC, for Dr Thaler, submits:(a) By the time the Act was passed in 2013, AIs existed and working invarious way, including inventing.31 Unlike the United Kingdom andAustralian Acts, the 2013 Act allows the "actual deviser" to be namedas the inventor regardless of whether the deviser is human and there isno requirement for the inventor to be a person. The 2013 Act removedthe previous Act's qualification, which was present since 1860, of"inventor" as "the person" who is the actual inventor. The definition isnow "person independent". This was more than just a carve-out ofimporters. It effectively discarded the very words the Commissioner27 Thaler v Commissioner of Patents [2022] HCATrans 199.28 Thaler v Hirshfeld 558 F Supp 3d 238 (ED VA 2021) at 240.29 At 246.30 At 246–248.31 See Nic Flemming "Computer-calculated compounds" (2018) 557 S55 at S57.now seeks to import. There is no requirement the inventor be a naturalperson. The naming of an inventor is a procedural formality not asubstantive requirement. It should be given its ordinary meaning, as anagent noun. The agent can be a person or a thing. Dictionarydefinitions of "devise" do not refer to "person" or require humaninvolvement. There is no statutory support for a narrow interpretationof "devise". The legislation should be read as forward-looking notenshrining the past.(b) Sections 9 and 189, which refer to an inventor being a person, just referto instances where the inventor may be a person. A patent applicationis required to fully identify the applicant as a natural or legal person buts 33 and reg 50 of the Patents Regulations 2014 only require the nameand address of the inventor. Their purpose is to enable the examiner tocheck whether the applicant is entitled to the benefits of any of thePatent Treaties, particularly the right to claim priority under the ParisConvention.32 New Zealand has never been attracted to the Frenchconcept of moral rights that has found its way into United Kingdompatent law.(c) Dr Thaler's agenda is for AI to be recognised for what it is. It wouldbe factually incorrect, and encourage litigation and revocation of apatent, to say anyone but DABUS is the inventor. The term "inventor"should be construed so as to promote technological innovation byrewarding it, regardless of whether it is made by a human or human andmachine working together. Even an animal can invent. Being aninventor does not have any legal effect, instead it provides kudos andthe ability to get funding. But if an AI is not an inventor of what itinvents then those inventions cannot be patented. The 2013 Act wouldachieve the opposite of encouraging and supporting innovation andarbitrarily exclude a class of important inventions from patentability.32 World Intellectual Property Organisation Paris Convention for the Protection of IndustrialProperty (as at 28 September 1979), art 4A.The decision of the Full Court of the Australian Federal Court is notreasoned to the same extent as Beach J's decision.(d) Dr Thaler has complied with all the requirements of a New Zealandpatent application. The Commissioner has no power to question orreject the identification of the inventor as he has. The AssistantCommissioner's interpretation limiting "inventor" to a natural personand not extending the definition to a non-human entity is plainlyerroneous.(e) Alternatively, if the Court does not accept an AI can be the soleinventor, then Dr Thaler seeks leave to amend the request to specifythat the invention was autonomously generated by the actual deviser ofthe invention, DARBUS, which was invented by Dr Thaler.[23] Mr Connolly, for the Commissioner, submits:(a) The Commissioner does not agree that DABUS actually devised orinvented the invention, or that an AI can invent, but submits thatwhether it did, or can, is irrelevant to this case. The only issue here iswhether an "inventor", for the purposes of the 2013 Act and regulations,is required to be a natural person or can accommodate an AI. It is withinthe Commissioner's role to determine whether the application complieswith the 2013 Act on its face. If it does not, it is void.(b) There is no suggestion in any of the legislative material that, byinserting a new definition of "inventor", Parliament intended to removethe requirement that an inventor be a natural person. Some expressacknowledgement of such an intention would be expected if it had.When Parliament used "actual deviser" in the definition of "inventor",its intention was to achieve the same outcome s 23(2) of the 1953 Actdid — allowing the inventor to be named in a patent. There was nothingto suggest Parliament intended the inventor would no longer need to bea natural person. The removal of the requirement to state the nationalidentity of the inventor cannot seriously be suggested to reflect anintention to expand the concept of inventor to include non-persons.(c) Other provisions that mention "inventor", such as ss 22, 177, and 189to 193, clearly contemplate the inventor is a person. Extending them tonon-persons, such as an AI, would be a strained and unnaturalinterpretation. The patent system promotes innovation, and balancesthe interests of the inventor and patent owners and the interest ofsociety, by conferring a time-limited monopoly on exploitation of theinvention. The inventor has the primary right to be granted a patent.Interpreting "inventor" as natural person will not stifle innovation andhuman ingenuity. The Court should have close regard to the Australianand United Kingdom decisions, given the close similarity in thestatutory provisions. Parliamentary Counsel's marginal note in s 22 ofthe 2013 Act refers directly to s 15 of the Patents Act 1990 (Cth).(d) The "inventor" must be a natural person so cannot be an AI and DrThaler did not specify a valid inventor in the application as required byreg 50(1)(b)(iv). Accordingly, the application is void under ss 71 and73 and the notice of entitlement did not demonstrate a valid basis unders 22 on which he is entitled to the grant of a patent.Can DABUS be named as inventor?[24] The legal implications of AI are interesting and are sure to be the subject ofincreasing debate and focus as AI capabilities develop. But, perhaps disappointingly,those implications in this case are simply a matter of statutory interpretation. Doesthe 2013 Act allow an AI to be named as an inventor?[25] The meaning of the statute must be ascertained from its text and in the light ofits purpose and context, as required by s 10 of the Legislation Act 2019 and theSupreme Court's interpretive approach in Commerce Commission v Fonterra Co-operative Group:33Even if the meaning of the text may appear plain in isolation of purpose, thatmeaning should always be cross checked against purpose in order to observethe dual requirements of [what is now s 10]. In determining purpose, the courtmust obviously have regard to both the immediate and the general legislativecontext. Of relevance too may be the social, commercial or other objective ofthe Enactment.[26] In addition, s 11 of the Legislation Act provides that "[l]egislation applies tocircumstances as they arise". So, in 2020, the Supreme Court interpreted "object" ins 131 of the Copyright Act 1994 to include digital files as a matter of text, context,policy, legislative history, and consistency with international obligations.34[27] The text of the definitions of "inventor" in ss 5 and 9 of the 2013 Act refers tothe "actual deviser" of the invention without explicitly saying that an inventor has tobe a person (which the definition of "applicant" does say). Section 22(1) states thata patent may only be granted to a person who satisfies one of three conditions,including that they are "the inventor" or derive title to the invention from the inventor.But Dr Thaler is not applying for DABUS to be granted the patent, only for DABUSto be named as the inventor. Section 22 does not provide explicitly that an inventormust be a person. But it is fair to say that the natural reading of the section suggeststhe inventor is a person. That is what the Full Court of the Federal Court of Australiasaid in relation to very similar wording in s 15 of the Patents Act 1990 (Cth), whichNew Zealand Parliamentary Counsel explicitly noted was an inspiration for s 22.[28] The legislative context of the 2013 Act matches those indicia, in being strictlyambivalent but leaning in favour of an inventor being a person:(a) Section 9 refers to "the inventor" and to "any other person" for thepurposes of disregarding disclosure of matter constituting an invention.33 Commerce Commission v Fonterra Co-operative Group Ltd [2007] NZSC 36, [2007] 3 NZLR767 at [22].34 Ortmann v The United States [2020] NZSC 120, [2020] 1 NZLR 475 at [314].(b) So does s 177, for the purpose of exercising the powers of court oncertain applications.(c) Sections 189 to 193 relate to inventors who are persons, where a requestor claim is made to be mentioned as an inventor.[29] These sections sit most easily with inventors who are persons. But, strictlyspeaking, those sections do not necessarily have to apply to all inventors. It is notclear that ordinary usage of language envisages an AI to have an address, as requiredby reg 50(1)(b)(iv) of the New Zealand regulations and reg 4.6 of the internationalregulations. But neither is it clear there is yet much "ordinary usage" of language inrelation to AI.[30] Even the purpose of the 2013 Act can be argued both ways. Section 3 begs thekey question in referring to the "appropriate circumstances" in which a patent isgranted and the "appropriate criteria" for granting a patent. Innovation and economicgrowth, referred to in s 3(a)(i), might generally be argued to be promoted by grantinga temporary monopoly, a patent, that allows the patent-holder to capture the gains ofa patent. That would give potential patent-holders incentives to invest in inventiveAIs. But, in the case before me, it is not clear that naming an AI as an inventor makesany difference to that either way. If the owner of an AI cannot capture the gains frominventions by the AI, by applying for a patent, that might make a difference to thepromotion of innovation and economic growth. But that point has not been establishedand cannot be established in this case.[31] Unusually, the point I find most persuasive in confirming the interpretation ofthis statute is its legislative history. New Zealand patent legislation from 1860 to 2013was predicated on an inventor being a person. Sections 7 and 23 of the 1953 Act madethat quite clear, similarly to ss 7 and 13 in the Patents Act 1977 (UK). The questionis: were the 2013 amendments, which removed the direct references to "persons" inthe relevant provisions, intended by Parliament to open up the possibility of an AIbeing an inventor?[32] There is nothing in the legislative history to indicate Parliament intended toopen up the possibility of an AI being an inventor under the 2013 Act. TheExplanatory Note to the Bill on introduction indicates the purpose behind theamendment was to prevent mere importers, who are not actual devisers of theinvention, from qualifying as inventors. That is entirely consistent with the scheme ofthe Act adopting absolute novelty standards, as the Ministry of EconomicDevelopment recommended to the relevant Minister in relation to the pre-introductiondevelopment of the Bill. It is consistent with the decisions of the Full Court of theFederal Court of Australia and the Court of Appeal of England and Wales in relationto their Acts, in the context of their developments patent law, which share a commonheritage and international influences with New Zealand patent law. And I do notdiscount the possible relevance of moral rights.[33] Given the purpose of Parliament, I do not consider it is appropriate for theCourts to effectively expand the definition of inventor through statutory interpretation.Such a step is more appropriately reserved, in our constitution, for Parliament. In theUnited Kingdom, after the first instance Court decision on Dr Thaler's application, thegovernment decided not to propose expanding the definition.[34] Finally, Dr Thaler claims to derive title to the invention, through thesurrounding circumstances, because he is the owner, and in possession of, DABUS.Whether that is so, or not, is not an issue that arises in these proceedings so I do notdeal with it. Similarly, regarding Mr Elliott's alternative submission, leave of theCourt is not required to amend an application before the Commissioner. Dr Thaler canrequest that of the Commissioner under s 202 of the 2013 Act.Result[35] I dismiss the appeal. By consent, costs will lie where they fall.Palmer J