The New Zealand Patent Office (IPONZ) has issued the latest decision in the worldwide pursuit to have the artificial intelligence (AI) machine known as DABUS recognised as an inventor, finding that AI cannot be an inventor under New Zealand law.1 While the IPONZ decision aligns with decisions issued to date by the UK and US courts,2 as well as the opinion of the European Patent Office Board of Appeal,3 it is in stark contrast to the recent Australian Federal Court decision that AI can be an inventor under Australian law, 4 which we discussed here and is currently under appeal.
IPONZ considered the application for grant of a patent by Dr Thaler to be void on the basis that the application did not identify a natural person (i.e., human) inventor. In particular, the Assistant Commissioner considered the application did not comply with subsection 22(1) of the Patents Act 2013 (NZ Act), which provides a patent for an invention may only be granted to a person who:
- is the inventor; or
- derives title to the invention from the inventor; or
- is the personal representative of a deceased person mentioned in paragraph (a) or (b).
Subsection 22 of the NZ Act closely reflects the provisions concerning who may be granted a patent under the Australian Patents Act 1990 (Cth) (AU Act).5 Unlike the AU Act, the NZ Act includes a definition of the term "inventor". However that definition merely states an inventor must be "the actual deviser of the invention".6 While there is no reference to natural persons in that definition, IPONZ nonetheless invoked various other sections of the NZ Act as supporting an interpretation that an inventor must be a natural person, stating:
That inventors fall within the class of natural human persons is intrinsic to the proper construction of the Act. If the legislators had intended to allow granting of patents in New Zealand for inventions devised solely by non-humans such as artificial intelligences, or life forms other than human beings they would have drafted the Act to accommodate these possibilities specifically and explicitly.
Even if DABUS could be regarded as an inventor, the IPONZ Assistant Commissioner was not satisfied Dr Thaler appropriately derived title to the invention from DABUS because, as a non-human, DABUS was not capable of holding title in the first place. In contrast, the Australian Federal Court accepted that Dr Thaler derived title to the invention from DABUS by virtue of possessory title and that there is no need for the inventor ever to have owned the invention for derivation of title to occur.7
It is likely Dr Thaler will appeal the decision by IPONZ and we will continue to provide updates as they arise.
1. Stephen L. Thaler  NZIPOPAT 2
2. Thaler v Comptroller General of Patents Trade Marks And Designs  EWCA Civ 1374; Thaler v. Hirshfeld, 1:20-cv-903(LMB/TCB), (E.D. Va. Sep. 2, 2021)
3. EPO Legal Board of Appeal decisions J 8/20 and J 9/20
4. Thaler v Commissioner of Patents  FCA 879; South Africa also granted a patent with DABUS named as the inventor, but does not conduct any substantive examination of the application and merely accepts the inventorship recorded on the PCT application
5. Subsection 15(1)
6. Patents Act 2013, s 5
7. Thaler v Commissioner of Patents  FCA 879 at 
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.