In most jurisdictions (including South Africa), the right to apply for a patent initially vests in the inventor(s). Incorrectly identifying the inventors can cast doubt on who legally owns the invention, and on who is entitled to apply for patent protection for that invention. There are common misconceptions which would easily lead to such an incorrect identification, including that every person who contributes to an invention is always an inventor.

There are numerous, and in some instances fatal, consequences for incorrectly citing inventors on a patent application. In South Africa (SA), the UK and Australia, incorrect citation of inventors is a ground for challenging and revoking a patent. In the US, if there was deceptive intent in naming the inventors, a court may find the patent invalid and thus unenforceable. However, correction of inventorship is generally allowed when the failure to name the correct inventors was unintentional. Thus, it is very important to make sure, in all instances, that the inventors are cited correctly.

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The legal definition of “inventor”

Starting at home, the South African Patents Act does not define “inventor”. However, in deciding on this question, the SA courts have held that, “[t]he ‘first and true inventor’ signifies that the person so described made the discovery himself, and that he did so before anyone else in any part of the world”.

Australian patent statute, like our own, does not provide an explicit definition for an inventor, and the same can be said for the America Invents Act. The UK Patents Act does in fact define an ”inventor”, as the “actual devisor” of an invention, which position is congruent with our law.

It is generally accepted in Australia that an inventor is a person who has made an inventive contribution and played a material role in devising the invention. The Australian courts have held that “inventor” bears its ordinary meaning, which is the “person who makes or devises the process or product”. In the US, the courts have said that an inventor is a person who conceived the claimed invention or contributed to the conception of a claimed invention.

Definitions in Australia and the US have clear differences with the SA and UK positions, in that a “material role” is taken into consideration in Australia, and the US law defines an inventor in relation to the “claimed” invention.

The test for inventorship

Courts in both South Africa and the UK have held that “[t]he task of the court is to identify the inventive concept of the patent or application and identify who devised it… [t]he court is not concerned with issues of validity or inventiveness: merely with the concept as described.”

The test is therefore twofold:

  1. Identify the inventive concept; and
  2. Identify who devised it.

The test is very similar in Australia – considering the nature of, and the contribution to, the inventive concept as a whole. The Australian courts have provided helpful factors to identify whether a person’s contribution to the invention was meaningful, including whether the contribution had a “material effect” on the invention, whether the contribution was to the “conception of the solution” to a problem solved by the invention, and whether the invention would have materialised but for that contribution.

The test is the US is different in a significant way. Determination of inventorship again involves a two-step test:

  1. Conception of the idea or subject matter of the patent claims; and
  2. Reduction of the idea to practice, or making a working example of the claimed

The first of the two steps is the critical step in determining inventorship, and reduction to practice per se is not significant. The meaning of “conception” has been decided by the US courts to mean that the idea is sufficiently definitive such that a person with ordinary skills in the art can reduce the idea to practice without undue experimentation. The inventor is determined with consideration to the claims only, as the test considers only the claimed invention.

Practical considerations for assessing inventorship

There are nuanced distinctions in how inventors are determined in different countries, so it is helpful to take a general, holistic approach when planning to file patent applications in multiple territories. Minor amendments may later be made to the citation of inventors when filing patent applications in each patenting territory, as needed.

1. The inventive concept should be identified as a whole from the body of the specification and the claims. The inventive concept is not guided by issues of validity (novelty, non-obviousness) in SA and the UK, but is guided thereby in the US.

2. Contributions to the inventive concept should be analysed to determine every person who should be added as an inventor. Contributions are made by persons who conceived the idea for a solution – the mental act of definitively forming an idea so that it may be applied in practice with ordinary skill. Conception does not merely involve a reduction to practice without something more. In the US, contributions are only significant if they assist in making the invention patentable (novel and inventive).

3. Where there are joint inventors, there should have been collaboration between them i.e. joint behaviour, or working under common direction, and requires communication between the inventors.

4. The citation of inventors in the US may differ depending on what is claimed in the patent, so it is best to decide on inventorship at the start of the process. If needed, inventorship may be updated in the US based on the final, granted claims.

5. The following persons are not automatically inventors:

  1. someone who simply puts forth a hypothesis (as opposed to conceiving an idea of how to solve a problem);
  2. supervisors or project leaders;
  3. lab technicians who simply carry out instructions without significant changes to those instructions, or build or test the invention after it has been conceived; and
  4. a person who writes up results and/or co-authors a paper.

6. If there is any uncertainty about whether or not a person is an inventor, it is prudent to document this formally. This will serve as evidence that there was no intended deception or fraud on the part of the applicant in incorrectly citing the inventors if there is a legal dispute about inventorship at a later date.

Artificial intelligence inventorship

More and more innovators are turning to artificial intelligence systems to conceive inventions, wholly or in part. The most-renowned example of this is an AI known as DABUS, which was created by Dr Stephen Thaler. From 2018, Dr Thaler applied in numerous countries for patents in respect of two inventions that Dr Thaler claims were autonomously created by DABUS. The inventions were for a food container and a flashing light. The patent applications cited as the only inventor, “DABUS, [t]he invention was autonomously generated by an artificial intelligence”. The question faced by courts around the world was whether an AI may be an inventor, or whether inventorship is reserved for natural persons only.

The Full Federal Court in Australia handed down a judgment in 2022, regarding one of the DABUS patents, holding that an inventor must be a natural person. It is therefore necessary to cite a human inventor to apply for patent protection in Australia. The decision in Australia is aligned with the position of the courts and Patent Offices in the UK, EU and US.

The UK Patents Act does not explicitly preclude a natural person from being assisted by a machine in his devising of an invention. The UK courts have also not had an opportunity to consider whether an AI-assisted invention is patentable, i.e. whether an invention devised by a natural person with the aid of an AI can be patented. The question of whether AI-assisted inventions are patentable in the UK therefore remains open. The same question remains to be answered in Australia, for the same reasons. However, it would appear unlikely in Australia and the UK that a patent could not be granted for an AI-assisted invention, provided there is a human which fulfils the requirement for being an inventor, i.e. a deviser of the invention.

In contrast, the US Patent Office has published guidelines which explicitly state that the use of an AI in devising an invention does not automatically disqualify patentability, and that the inventorship enquiry should focus on human contributions. The guidelines also specifically provide that inventions created entirely by AI are not patentable. It would appear that inventions created entirely by AI are also not patentable in Australia and the UK.

South Africa, interestingly, was the first country to grant a patent citing an AI as an inventor. However, our courts have not had an opportunity to assess the validity of this decision by the South African Patent Registrar or whether an AI may be an inventor.

As things currently stand, it is recommended that human inventors always be cited when applying for a patent, as opposed to AI.

If you’ve gotten this far, can you now answer the question, “Are you sure you invented that?”