DABUS in China: So far, it is 0–2

Knock-knock-knockin' on
(or opening?) the law's door... 

In China, annually during the week of World Intellectual Property Day, several events are held that spotlight IP protection and governance. For example, Chinese institutions often announce important IP cases from the previous year. The Supreme People’s Court typically highlights the Top 10 IP Cases and 50 Typical IP Cases. Similarly, the China National Intellectual Property Administration (CNIPA) also publishes its own 'Top 10 cases'. 

This year, as this Kat leisurely scrolled through the ‘Top 10 Patent Re-examination and Invalidation Cases in 2023’ from the CNIPA, her eyes widened when she stumbled upon the 10th case: '食物容器和吸引增强注意力的装置和方法 (Food Containers and Devices and Methods for Attracting Enhanced Attention)’ – involving quite a familiar name for IPKat readers, DABUS.

The CNIPA’s comment on this case reads as follows (this Kat's own translation, with emphasis added): 

10. In the re-examination of a patent application for an invention titled ‘Food Container and Devices and Methods for Attracting Enhanced Attention’, the review upheld the decision of rejection. Grounded in the basic principles of civil law, the re-examination decision provides a systematic interpretation of the legislative purpose of the patent inventor system and makes the first case determination in China regarding the question of whether ‘artificial intelligence (AI) can be registered as a patent inventor’. 

Going from there, this Kat tracked down the re-examination decision ('RD'; no. 1373038*) dated 29 December 2023 to investigate DABUS' journey in China.   

Round 1

In 2019, a patent application titled ‘Food Containers and Devices and Methods for Attracting Enhanced Attention’ (no. 201980006158.0) was filed, with DABUS claimed as the inventor.  The application was rejected by the CNIPA’s preliminary examination division on 14 April 2021. 

On 29 July 2021, Steven L. Tyler requested re-examination, arguing that recognising DABUS as the inventor aligns specifically with two legal provisions: 

First, the principle of good faith, as stipulated in Article 7 of the Civil Code of China, states, ‘When conducting a civil activity, a person of the civil law shall, in compliance with the principle of good faith, uphold honesty and honour commitments.’ Mr. Tyler invoked this provision probably because he indeed believes that declaring DABUS as the inventor would be an honest and truthful statement. 

Secondly, according to Article 13 of the Implementing Regulations of the Patent Law (2010), which addresses the eligibility of inventors, ‘… The terms “inventor” or “creator” in patent law refer to any person who contributes creatively to the substantive features of an invention-creation.’ Mr. Tyler’s argument based on this provision is self-explanatory, as he contends that DABUS’s contribution qualifies under these criteria. However, it should be noted that the RD provides fewer details than typically expected in a court ruling.

Round 2

The re-examination upheld the CNIPA’s preliminary rejection, providing a three-layered reasoning. 

The first consideration was teleological: 

The purpose of determining the inventor in the patent application and approval procedure is not only to examine whether the invention claimed in the patent application should be granted patent rights but also to determine what subjects should own the relevant rights.

As to the relevant rights, the RD provided examples of the right to a reasonable amount of remuneration (for an employment invention-creation) and the right to inventorship, as outlined respectively by Arts. 16 and 17(1) of the Patent Law of China (2008):

Article 16 The unit that is granted the patent right shall reward the inventor or designer of an employment invention-creation. After such patent is exploited, the inventor or designer shall be given a reasonable amount of remuneration according to the scope of application and the economic results. 

Article 17 An inventor or designer shall have the right to state in the patent documents that he is the inventor or designer. … 

The second consideration was based on basic principles of civil law: 

Civil subjects are individuals or entities who hold civil rights, fulfil civil obligations and are affected by legal outcomes. 

… the property rights and personal rights outlined in Arts. 16 and 17(1) of the Patent Law of China (2008) are all civil rights. Therefore, only the civil subjects that meet the provisions of the civil law can be considered the rightful holders of the inventor’s relevant civil rights.

The definition of civil subjects, as per the General Rules of the Civil Law** at the time of filing the DABUS application in China and also under the Civil Code of China, refers to natural persons, legal persons and unincorporated organisations. Yet, DABUS, as an ‘AI system’, does not fall into any of these categories and thus cannot be defined as the inventor in the patent administrative procedure. 

Lastly, the RD stated that the inventors, as defined in patent law and its Implementing Regulations (2010), should be natural persons: 

Art. 6(2) of the Patent Law of China, 2008 states, "For a non-employment invention-creation, the inventor or designer has the right to apply for a patent. Once such an application is granted, the inventor or designer becomes the patentee". 

Art. 13 of the Implementing Regulations of the Patent Law (2010) [Kat's note: See the specific citation in Round 1]"

Conclusion 

The Artificial Inventor Project shows that administrative litigation (case reference: (2024) Jing 73 Xing Chu No. 6353), likely against the very RD discussed in this post, has been filed with the Beijing IP Court. This Kat doubts the chance of a reversal, as the DABUS application in question simply tests a clear-cut formality rule under Chinese patent law, leaving little room for arguments. 

The bad news for similar attempts is that the CNIPA’s Guidelines for Patent Examination 2023, effective from 20 January 2024, shuts the door tightly: ‘§4.1.2 Inventor … the inventor shall be an individual(s). The name of an AI must not be filed in a patent application (as an inventor).’ 

‘AI as an inventor?’ is far from a new topic. Back in 2018, the five IP offices’ meeting in Munich confirmed the natural person inventor as a common requirement. Maybe one day, legal frameworks will recognise entities like DABUS as lawful inventors. But until the law actually changes, the outcome of applying the existing law in China will remain unchanged and predictable. 

Regarding this specific DABUS attempt in China, if we strip away the dazzling shell coating of AI technology and the hype, the actual invention (?) or product involved seems to be missing from the focus of the present debate.  Such analysis will surely be the next stop in the AI invention debate in China. 

With or without the whole DABUS saga, humanity’s quest for solving the unavoidable AI-related legal questions in the course of advancing, e.g., ownership/inventorship, patentability and ethics, continues. Nevertheless, DABUS can hardly be overlooked as a catalyst for legal thinking and potential future reforms. It has attracted a great deal of attention and discussion, which will undeniably move the global IP law debate forward. 

*This Kat thanks Mr Huang Huan for kindly sharing the CNIPA’s re-examination decision. 

**The General Rules of the Civil Law (民法总则), effective from 1 October 2017, were abolished on 1 January 2021 and replaced by the Civil Code of China.

Image credit: DALL·E