Introduction
Decisions in other jurisdictions
South African law
Deficiencies with South African Dabus patent application
Comment
The South African Companies and Intellectual Property Commission (CIPC) made history in 2021 by being the first patent office in the world to grant a patent listing an artificial intelligence (AI) system, rather than a person, as the inventor.
On 28 July 2021, the CIPC published the acceptance of South African patent No. 2021/03242 in the South African Patent Journal. The publication of the acceptance of the application for a patent in the South African Patent Journal signifies the grant of the patent by the CIPC. The patent lists "Dabus" (Device for the Autonomous Bootstrapping of Unified Sentience) as the inventor and notes that "the invention was autonomously generated by an artificial intelligence". The developer of the AI system, Stephen Thaler, is the patentee.
Decisions in other jurisdictions
Thaler filed corresponding patent applications in a number of jurisdictions, including the United States, the European Patent Office (EPO), the United Kingdom, Germany, New Zealand, Taiwan, India, Korea, Israel and Australia.
The patent applications filed by Thaler in all of those countries, with the exception of South Africa, have, so far, been rejected, mainly on the finding that a natural person must be listed as an inventor on a patent application.
In Australia, the full Federal Court held that an AI system could not be considered as an inventor for the purposes of the Australian Patents Act and Regulations. On 11 November 2022, leave to appeal was denied by the High Court. It is now settled in Australia that an inventor must be a natural person.
The EPO held that an inventor within the meaning of the European Patent Convention (EPC) had to be a natural person. The EPO Legal Board of Appeal confirmed the decision, and the two patent applications, in which Dabus was designated as inventor on the application form, were refused.
In the UK Court of Appeal, it was held that the inventor is not a person, and thus the application did not comply with the UK Patents Act. The UK Supreme Court has granted Thaler permission to file a further appeal, which is to be heard on 27 February 2023.
At present, South Africa is the only country in the world in which a patent listing an AI system as an inventor has been granted. The South African Dabus patent application was filed as a national phase patent application in terms of the Patent Cooperation Treaty (PCT).
The South African Patents Act (No. 57 of 1978) provides that "an application for a patent in respect of an invention may be made by the inventor or by any person acquiring from him the right to apply or by both such inventor and such other person". The Patents Act also provides that:
any person other than the inventor making or joining in an application for a patent shall in the prescribed manner furnish such proof of his title or authority to apply for a patent as may be prescribed.
The Patents Act does not contain a definition of an "inventor". However, when referring to the inventor, the Patents Act refers expressly to "him" and "person". It is therefore clear from the Patents Act that an inventor must be a person, which an AI system is not. This is in line with the decisions of the Australian Full Federal Court, the UK Court of Appeal and the Legal Board of Appeal of the EPO: in terms of the law as it stands, it is not envisaged that an inventor can be anything other than a natural person, and AI cannot be an inventor.
Deficiencies with South African Dabus patent application
The EPO Legal Board of Appeal stated that it is not aware of any case law that would prevent the user or the owner of a device involved in an inventive activity to designate themselves as inventor. This does not apply to the South African Dabus patent, because Dabus – not Thaler – is listed as the inventor. Even if Thaler was listed as the inventor of the South African Dabus patent, this may not have been of assistance. In the UK Court of Appeal, Arnold LJ stated that there is no rule of law that a new intangible produced by existing tangible property is the property of the owner of the existing tangible property.
The CIPC does not conduct substantive examination of a patent application (eg, to assess novelty and inventive step), but in terms of the Patents Act and the Patent Regulations, the CIPC must still make sure that formal requirements are complied with. One of the formal requirements is that where the applicant has acquired a right to apply from the inventor, an assignment or other proof, to the satisfaction of the registrar, of the right of the applicant to apply must be filed with the CIPC.
Thaler lodged no declaration or proof of right to apply for the Dabus patent during the PCT phase of the application in terms of PCT rule 4.17(ii), or at the CIPC. The power of attorney form P3 lodged in support of the Dabus patent in South Africa makes no mention as to how the invention had been transferred to the applicant. The wording "and the applicant(s) has/have acquired the right to apply by virtue of an assignment from the inventor(s)" was deleted from the form P3. The power of attorney form P3 therefore provides no declaration or proof of Thaler's right to apply for the patent. As no proof of right to apply was provided, it may be concluded that the CIPC should not have accepted the Dabus patent.
It may be considered that the Dabus patent is deficient (and thus should have been rejected by the CIPC), since:
- the phrase relating to the acquisition of the rights to the invention by the applicant – in this case, Thaler – was struck out from the form P3. The form P3 therefore gives no indication or declaration as to how Thaler had obtained the right to apply for the patent;
- no declaration of the applicant's entitlement to apply for a granted patent was filed in terms of PCT rule 4.17(ii); and
- no proof of the assignment of the rights in and to the invention, as is required in terms of the Patents Act, was lodged at the CIPC, indicating how Thaler acquired the right to apply for the patent.
Further, in view of the wording of the Patents Act, and the decisions of the courts in Australia and the United Kingdom and the EPO Legal Board of Appeal, an AI system such as Dabus cannot be an inventor.
The South African Dabus patent has been touted as the first patent granted for an invention created by an AI system, but it stands alone, with patent offices and courts around the world rejecting corresponding patent applications. It may therefore be understood that the Dabus patent should have been rejected by the CIPC in South Africa. This is not to say that the notion that an AI system could be an inventor should be rejected, or that inventions created by AI should not be capable of patent protection. To the contrary, Dr Thaler has drawn attention to this interesting question. The current patent laws do not, however, make provision for AI being recognised as an inventor, and for this to happen there will need to be a change in the patent laws. The rise of the inventive machines is inevitable; it remains to be seen whether lawmakers will recognise AI in the same way that the laws currently recognise human ingenuity.
For further information on this topic please contact Christopher Mhangwane or David Cochrane at Spoor & Fisher by telephone (+27 12 676 1111) or email ([email protected] or [email protected]). The Spoor & Fisher website can be accessed at www.spoor.com.