The South African Companies and Intellectual Property Commission (CIPC) made history by being the first patent office in the world to grant a patent listing an artificial intelligence (AI) system, rather than a person, as an 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” (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, Dr Stephen L Thaler, is the patentee.
Dr Thaler filed corresponding patent applications in a number of jurisdictions, including the United States, the European Patent Office (EPO), 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 be listed as an inventor on a patent application.
In this article we review the decisions of the Courts in Australia and the United Kingdom (UK), and the European Patent Office (EPO) Legal Board of Appeal, and possible impact of the decisions on the situation in South Africa. We will also review the application procedure in South Africa.
The Australian DABUS patent application no. 2019363177 was filed on 9 September 2020 as a national phase patent application of International patent application no. PCT/IB2019/057809, an application made in terms of the Patent Cooperation Treaty (PCT).
The Deputy Commissioner of Patents rejected the DABUS application, holding that section 15(1) of the Australian Patents Act 83 of 1990 (“the Australian Patents Act”) is inconsistent with an AI machine being treated as an inventor. Section 15(1) provides that: a patent for an invention may only be granted to a person who:
a) is the inventor; or
b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
d) is the legal representative of the deceased person mentioned in paragraph (a), (b) or (c)”.
Dr Thaler applied successfully for a judicial review of the Deputy Commissioner’s decision to refuse the grant of the patent in Australia. The Australian Patents Act does not include a definition for “inventor”. On 30 July 2021, the Federal Court of Australia held that, “an artificial intelligence system or device can be an inventor for the purposes of the Australian Patents Act. First, an inventor is an agent noun; an agent can be a person or thing that invents (similar to how a “controller” and “dishwasher” can be a person or thing). Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor. Third, nothing in the Australian Patents Act dictates the contrary conclusion”. Further, the Federal court held that in terms of section 15(1)(c) of the Australian Patents Act, a patent for an invention may be granted to a person who derives title to the invention from the inventor or assignee, and that the concept of “derivation” is broad and is not limited to assignments or any transfer of title as such. It was then held that since Dr Thaler is the owner, programmer and operator of DABUS, the AI system that made the invention; in that sense the invention was made for him; and on established principles of property law, he becomes the owner of the invention when the invention comes to his possession.
The decision of the Federal Court of Australia was, however, overturned on appeal by the full Federal Court. On 13 April 2022, 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. An inventor must be a natural person. In coming to its decision, the full Federal Court had to interpret the meaning of “inventor” under the Australian Patents Act and Regulations, which required, in part, a review of the history of the legislation and the intention of Parliament.
Dr Thaler filed a special leave to appeal the judgement of the full Federal Court. 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.
European Patent Office
On 17 October 2018 and 7 November 2018 Dr Thaler filed two European DABUS patent applications with the European Patent Office (EPO) namely, EP 18 275 163 and EP 18 275 174. The Receiving Section of the EPO refused the applications in accordance with Article 90(5) of the European Patent Convention (EPC) on two grounds, namely:
- a designation indicating a machine as inventor did not meet the requirements of Article 81 and Rule 19(1) EPC, because an inventor within the meaning of the EPC had to be a natural person; and
- the “statement indicating that the applicant acquired the right to the European patent from DABUS as employer”, and “the correction of this statement to indicate succession in title” did not meet the requirements of Articles 60(1) and 81 EPC, because a machine had no legal personality. Therefore, it could neither be an employee of the applicant nor transfer any right to him.
Dr Thaler filed an appeal to the Receiving Section’s decision, but this was dismissed on 21 December 2021 by the Legal Board of Appeal of the EPO. The Legal Board of Appeal confirmed the decision of the Receiving Section of the EPO to refuse the two applications, in which DABUS was designated as inventor on the application form. The Legal Board of Appeal also refused an auxiliary request according to which no person had been identified as inventor but merely a natural person was indicated to have “the right to the European Patent by virtue of being the owner and creator of the artificial intelligence system DABUS. On 5 July 2022 the EPO Legal Board of Appeal provided grounds for their decision of 21 December 2021 and further provided that “the Board 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 under European patent law.”.
Two corresponding United Kingdom (UK) patent applications nos. GB18116909.4 and GB1818161.0 were filed as Convention patent applications in terms of the Paris Convention (i.e. they did not follow the PCT route), on 17 October 2018 and 7 November 2018, respectively. The UK Intellectual Property Office (UKIPO) held that the applications were withdrawn since the statement of inventorship form was found not to satisfy section 13(2) of the UK Patents Act 1977 (“The UK Patents Act”). Section 13(2) of the UK Patents Act provides that an applicant for a patent shall within the prescribed period file with the Patent Office a statement identifying the person or persons whom he believes to be the inventor or inventors; and where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent. The failure that resulted in the applications being withdrawn was therefore on two grounds, namely:
- that DABUS was not a person and so cannot be the inventor; and
- Dr Thaler was not entitled to apply for the patents.
Dr Thaler appealed the refusal to the High Court, where his appeal was dismissed by the court. However, Dr Thaler was given permission to appeal to the United Kingdom Court of Appeal.
The judgement of the UK Court of Appeal, handed down on 21 September 2021, was a split decision of 2:1, with Arnold LJ and Laing LJ dismissing the appeal, whilst Birss LJ allowed the appeal. In agreement with Arnold LJ and Laing LJ, Birss LJ held that in terms of the UK Patents Act an “inventor” is the person who actually devised the invention, and that DABUS is not the actual deviser since the inventor is and can only be the person that actually devised the invention.
However, Birss LJ found that section 13 of the UK Patents Act, in relation to inventorship, only requires that the applicant must identify who he believes is the inventor, and if the Comptroller is satisfied that the applicant has provided their genuine belief then the requirements of section 13(2)(a) are satisfied. Birss LJ also stated that section 7(4) of the UK Patents Act provides a presumption that the person making the application shall be the person entitled to the grant of the patent. The purpose for the presumption is to get away from the idea that grant to a person inherently makes the patent invalid in some way and it is to relieve the Comptroller of any obligation to examine the quality of the applicant’s claim to the right beyond providing an indication under section 13(2) of the UK Patents Act. Further, Birss LJ held that the requirement of section 13(2) of the UK Patents Act have been met since Dr Thaler filed a statement, within the appropriate time, in which he identified the person whom he believes to be the inventor. His amended statement identified no person as the inventor because he believes there is no human inventor. Birss LJ also held that Dr Thaler has complied with his obligation under section 13(2)(b) of the UK Patents Act since he has given an indication of the derivation of his right to be granted a patent (i.e. owner of the creativity machine DABUS), and as a result the appeal should succeed.
Laing LJ and Arnold LJ disagreed with Birss LJ’s conclusion and held that Dr Thaler had not complied with section 13(2)(a) of the UK Patents Act because (a) he has not identified the person he believes is the inventor, and (b) he has positively asserted, instead, the inventor is not a person, and thus drawn attention to the fact that the application does not and cannot fall within section 7 of the UK Patents Act. Section 7(2) 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, Laing LJ and Arnold LJ 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, on 12 August 2022, 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 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).
Section 27(1) of 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”. However when referring to the inventor, the SA Patents Act 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 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, that 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.
As mentioned above, 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 himself as inventor. This does not apply to the South African DABUS patent, because DABUS – 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. In the UK Court of Appeal, Professor Abbott who argued this part of Dr Thaler’s appeal relied on the common law doctrine of accession derived from Roman law, which states that the owner of a pre-existing tangible property is the owner of a new tangible property produced by the existing property, and that as the owner of DABUS, he is the owner of the invention derived by DABUS. Arnold LJ however held that the doctrine applies only to tangible property, and not to a new invention which is intangible intellectual property. Professor Abbott argued that information produced by a machine was the property of the owner of the machine. Arnold LJ however stated that this is really an argument about what the law should be, rather than about the present state of the law. In Arnold LJ’s judgement, 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 SA Patents Act and Regulations also provides that there must be a transfer of the rights in the invention from the inventor to the applicant in a situation where the inventor is not the applicant. Generally, rights are transferred with informed consent from the inventor(s) to the applicant(s) by way of an assignment of rights. In this regard, Regulation 22(1)(d) of the South African Patent Regulations, provides 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. Furthermore, in terms of Regulation 22(1)(c), the applicant must also file a declaration and power of attorney on Form P3. The Form P3 is a prescribed form that requires a statement as to how the applicant acquired the right to apply for a patent from the inventor.
The Form P25 lodged in support of the application for South African patent no. 2021/03242 makes no indication that a declaration or other proof or statement that Dr Thaler had the right to apply for the patent accompanied the patent application.
The Power of Attorney form P3 lodged in support of the patent application 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 of 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 Dr Thaler’s right to apply for the patent.
A Practice Directive, dealing with proof of assignment of invention of PCT national phase applications in South Africa was published in the South African Patent Journal of April 2009:
The DABUS PCT application no. PCT/IB2019/057809 includes a Rule 4.17 declaration:
This however is a declaration in terms of PCT Rule 4.17(i) which merely identifies DABUS as the inventor. It is not a declaration of the applicant’s entitlement to apply for a granted patent in terms of PCT Rule 4.17(ii), and as envisaged at paragraph (b) of the Practice Directive. This declaration does not, in the writers’ views, meet the requirement of proof of Dr Thaler’s right to apply, as required by Section 30(4) of the South African Patents Act.
It may be argued that paragraph (a) of the Practice Directive means that no assignment is needed if the PCT and South Africa applicant and inventor details match. The writers disagree – paragraph (a) of the Practice Directive merely states that if the inventor is the applicant, then no assignment is needed. Furthermore, the former interpretation of paragraph (a) of the Practice Directive would be contrary to Section 30(4) of the Patents Act and Regulation 22(1)(d) because it would mean that no proof of the applicant’s right to apply is required, which would render the Practice Directive ultra vires. The Registrar has a discretion as to what proof of right to apply is acceptable, but there must be some proof such as an assignment, declaration or explanation. The record of the inventor/s and applicant/s on a PCT application provides no proof of the right to apply.
Paragraph (e) of the Practice Directive states that proof of assignment of invention will not be required “where the applicant recorded on the PCT pamphlet is the same as the applicant recorded on the priority application thereof”. Paragraph (e) of the Practice Directive states that when the applicant of the priority application is the same as the applicant for the PCT application, there has been no change of applicant since the priority application was filed and a deed of assignment is not needed. Paragraph (e) does not mean that proof of the applicant’s right to apply from the inventors is not required, as this would render the Practice Directive ultra vires. Again, the Registrar has a discretion as to what proof of right to apply is acceptable, but there must be some proof such as an assignment, declaration or explanation.
Chapter VA of the South African Patents Act deals with International patent applications under the PCT. Section 43F(2) states that when processing the national phase of an international application, the Patent Cooperation Treaty, the regulations made thereunder and the administrative instructions issued under those regulations shall prevail in the event of any conflict with the South African Patents Act. This will be of no assistance to the DABUS patent, as the applicant did not submit any proof of entitlement as required by PCT Rule 4.17(ii).
The writers are of the view that the DABUS patent should not have been accepted, because Section 30(4) of the SA Patents Act and Regulation 22(1)(d) have not been complied with.
In summary, the DABUS patent in South Africa, in the writers’ views, is deficient and 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, 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;
- No declaration of the applicant’s (Dr Thaler’s) entitlement to apply for a granted patent in terms PCT Rule 4.17(ii) was filed; and
- No proof of the assignment of the rights in and to the invention, as is required in terms of section 30(4) of the Patents Act and Regulation 22(1)(d), 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 system 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 system, 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 system 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.
Christopher Mhangwane and David Cochrane