By Christopher Mhangwane, Associate, and David Cochrane, Partner, Spoor & Fisher

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) rather than a person as the inventor.

On 28 July 2021, the CIPC published the acceptance of South African patent no. 2021/03242 (“the SA DABUS patent”) in the South African Patent Journal. The publication of the acceptance of the application for a patent in the Patent Journal signifies the grant of the patent by the CIPC. The patent lists “DABUS” as the inventor and notes that “the invention was autonomously generated by an artificial intelligence”. DABUS is an acronym for “Device for the Autonomous Bootstrapping of Unified Sentience”. The developer of the AI, Dr Stephen L Thaler, is the patentee.

Dr Thaler filed corresponding patent applications in a number of jurisdictions, including the United States of America (USA), the European Patent Office, the United Kingdom (UK), Germany, New Zealand, Taiwan, India, Korea, Israel and Australia.

The patent applications filed by Dr 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 listed as an inventor on a patent application.

In Australia, the full Federal Court held that an AI 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. In the decision, it is stated: “the court is of the opinion that this is not the appropriate vehicle to consider the questions of principle sought to be agitated by the applicant. Special leave to appeal is refused with costs.” It is now settled in Australia that an inventor must be a natural person.

The European Patent Office (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 drawn attention to the fact that the application does not comply with the UK Patents Act, which provides that a patent for an invention may be granted primarily to the inventor or joint inventors; to the assignee; or to the successor in title of the inventor(s) or assignee(s). Further, it was held that the statement that Dr Thaler acquired the right to the patents by ‘ownership of the creativity machine DABUS’ did not indicate a derivation of the relevant right which is known in law. As a result, the appeal was dismissed. The court also added that it must apply the law as it presently stands, and this was not an occasion to debate what the law ought to be. The UK Supreme Court has granted Dr 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 as an inventor has been granted. South African DABUS patent application was filed as a national phase patent application in terms of the Patent Cooperation Treaty (PCT). As a result, some believe, incorrectly in the writers’ views, that the CIPC was obliged to accept DABUS as an inventor since inventorship was not objected to during the international phase of the PCT application.

The South African Patents Act No. 57 of 1978 (the SA Patents Act) 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 SA 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 SA Patents Act does not contain a definition for an “inventor”. The SA Patents Act however when referring to the inventor refers expressly to “him” and “person”. It is therefore clear from the SA Patents Act that an inventor must be a person, which an AI 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, that in terms of the law as it stands, it is not envisaged that an inventor can be anything else other than a natural person, and AI cannot be an inventor.

The EPO Legal Board of Appeal stated that it is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor. This is not of assistance with the SA DABUS patent , because DABUS, and not Dr Thaler, is listed as the inventor. Even if Dr Thaler was listed as the inventor of the South African DABUS patent, this may not have been of assistance to the South African DABUS patent. In the UK Appeal Court 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 (for example for novelty and inventive step), but in terms of the SA Patents Act and 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. No declaration or proof of right to apply for the DABUS patent was lodged by Dr Thaler 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 was 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)” has been deleted from the Form P3. The Power of attorney Form P3 therefore does not provide any declaration or proof of Thaler’s right to apply for the patent. As no proof of right to apply was provided, the writers, therefore, are of the view that the DABUS patent should not have been accepted by the CIPC.

In summary, the DABUS patent in South Africa, in the writers’ views, is deficient and should have been rejected by the CIPC, since:

1. The phrase relating to the acquisition of the rights to the invention by the applicant, in this case, Dr Thaler, was struck out from the form P3. The form P3 therefore gives no indication or declaration as to how Dr Thaler obtained the right to apply for the patent;

2. No declaration of the applicant’s entitlement to apply for a granted patent was filed in terms of PCT Rule 4.17(ii); and

3. No proof of the assignment of the rights in and to the invention, as is required in terms of the Patents Act, has been lodged at the CIPC, indicating how Dr Thaler acquired the right to apply for the patent.

Furthermore, in view of the wording of the South African Patents Act, and the decisions of the courts in Australia, and the UK, and the EPO Legal Board of Appeal, an AI such as DABUS cannot be an inventor.

South African DABUS patent no. 2021/03242 has been touted as the first patent granted for an invention created by an AI, but it stands alone, with patent offices and courts around the world rejecting corresponding patent applications. In the writers’ views, the DABUS patent should have been rejected by the CIPC in South Africa. This is not to say that the writers reject the notion that an AI could be an inventor, 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, and it remains to be seen whether the law makers will recognise AI in the same way that the laws currently recognise human ingenuity.