By: Pieter Visagie Partner and Patent Attorney at Adams and Adams

In the past few weeks, there has been extensive reporting, globally, heralding the South African Patent Office (administered by the Companies and Intellectual Property Commission, or “CIPC”) (“Patent Office”) for having been the first patent office in the world to have granted a patent for an invention that was created by artificial intelligence (“AI”).

The abovementioned reporting would be bolstered by the recent reports of the Australian Federal Court ruling, in a respect of a corresponding patent application in that country, that the naming of AI as an inventor in an Australian patent application is permissible (Thaler v Commissioner of Patents [2021] FCA 879).

In South Africa, the relevant patent is South African patent number 2021/03242 (“Patent”), granted on 28 July 2021 to Stephen L. Thaler and naming as inventor “DABUS, The invention was autonomously generated by an artificial intelligence”.

Besides the Australian counterpart, the Patent has several other foreign counterparts, some of which have already been rejected by the relevant foreign patent offices on the basis that the identification of AI as an inventor does not meet their formality requirements. We have written about some of these counterparts, and their rejection, on two earlier occasions:

–       UK Provisionally Closes the Door on AI Inventorship – Adams & Adams

–       EPO decides on AI inventorship – Adams & Adams

The global buzz around the grant of the Patent is understandable, since the question of whether inventions created by AI are patentable has over the past few years been the subject of much debate.

This global buzz is in our view somewhat misplaced in the context of the South African grant.

Any contribution that the grant of the Patent makes to the debate must be viewed in the context of the provisions of the applicable laws, treaties and practices that were followed by South African Patent Office in granting the Patent, however.

Regrettably, as we conclude below, it is clear to us that there was, in the circumstances leading up to the grant of the Patent, no interrogation by the Patent Office of the identification of AI as inventor, at least since the relevant treaties, laws and practices, as purposefully utilized by the applicant to clear its path to grant, left virtually no room for the Patent Office to do so.

In terms of the South African Patents Act 57 of 1978, as amended (“Patents Act”) and the regulations issued thereunder (“Patent Regulations”), one of the formality requirements that an application for a patent in South Africa must comply with, is to identify the inventor(s) of the invention for which patent protection is sought.

The requirement to identify the inventor(s) of an invention exists because the right to pursue patent protection for an invention originates from the inventor.  It is the inventor who, first and foremost, has the right to file a patent application for their invention.

While neither the Patents Act nor the Patent Regulations stipulate that an inventor necessarily must be a natural person, we believe that this is implicit since the right to pursue patent protection is a legal right that attaches to the inventor as a legal subject.  In South Africa, only natural and juristic persons are recognized as legal subjects.  AI falls in neither of these categories.

The right to apply for patent protection is an assignable right which, if assigned, would allow the assignee to apply for patent protection instead of the inventor.  In cases in which the inventor identified in a patent application is not the one applying for patent protection (i.e. is not the applicant), another formality requirement that must be complied with is that proof of the applicant’s entitlement to apply for patent protection must be provided (e.g. in the form of an assignment agreement).

The above formality requirements therefore embody two difficulties that the applicant for the Patent needed to overcome in South Africa, since the identification of AI as an inventor would, we believe, not only be substantively deficient, but may also be viewed as formally deficient, as would any proof of the applicant’s entitlement that the applicant may have been able to provide.

It appears that an interrogation of both these issues by the South African Registrar of Patents (“Registrar”) was circumvented on legally technical grounds.

The Patents Act places an obligation on the Registrar to examine all patent applications for compliance with the formality requirements prescribed by the Patents Act, which include those referenced above, before the Registrar may allow a patent application to proceed to grant.

Currently, examination as to compliance with formality requirements is the full extent to which the Registrar examines patent applications.  There is currently no examination as to compliance with substantive requirements, e.g. patentability, although this is in the pipeline.

The Registrar’s examination of South African patent applications is not in all circumstances governed only by the Patents Act and the Patent Regulations, however, particularly when a South African patent application is based on an earlier patent application filed in terms of the Patent Cooperation Treaty (“PCT”).

In terms of Section 43F(2) of the Patents Act, when processing an application for a patent that originates from an earlier patent application filed in terms of the PCT (“PCT application”), the regulations made under the PCT (“PCT Regulations”) and the administrative instructions issued under the PCT Regulations shall prevail in the event of any conflict with the Patents Act.

The Patent is based on an earlier patent application under the Patent Cooperation Treaty (“PCT”), number PCT/IB2019/057809.  Therefore, its examination by the Registrar would have been dictated by the PCT Regulations.

Under Rule 51bis.2 of the PCT Regulations, the Registrar is prohibited from requesting any document or evidence relating to the identity of an inventor identified in a South African patent application, if such a patent application is based on an earlier PCT application that includes a declaration of inventorship under Rule 4.17(i) of the PCT Regulations, unless the Registrar reasonably doubts the veracity of the identification.

In the present case, the earlier PCT application on which the Patent is based did include a declaration of inventorship under Rule 4.17(i).  Thus, the ability of the Registrar to interrogate the identity of the inventor, was curtailed.

In addition, and more significant perhaps, are the contents of an April 2009 practice directive (“Practice Directive”) by the Registrar, that the Registrar shall not call for proof of the applicant’s entitlement in filing a South African patent application, in cases in which the patent application is based on an earlier PCT application in which the identity of the applicant is the same as the identity of the applicant of an earlier priority application on which the PCT application is based.

In the present case, the identity of the applicant in the earlier PCT application on which the Patent is based and the identity of applicants in the earlier priority applications on which the PCT application is based, are indeed the same.  Thus, the usual requirement for proof of the applicant’s entitlement the Registrar was circumvented on the basis of the Practice Directive.

Thus, by basing the application for the Patent on a PCT application, the applicant for the Patent cleared the path to the grant of the Patent, having circumvented any basis for interrogation of the identification of AI as inventor by the Registrar.

We therefore conclude that the grant of the Patent has, unfortunately, made no substantive contribution to the debate on the question of AI inventorship in the context of patent protection, and the Patent is likely vulnerable to attack on several grounds.  At best, the grant of the Patent has provided a roadmap to applicants for patents for AI created inventions on how to circumvent interrogation of the issue during formality examination in South Africa. Unfortunately, this does not provide such applicants with any certainty regarding the validity and enforceability of any patent granted under these circumstances.

Any excitement generated around the grant of the Patent should therefore be moderated by the obvious and foreseeable difficulty that the patentee would ultimately have to be able to prove that it had acquired the right to apply from the AI, a machine.

In our view, the debate of AI inventorship in the context of patent protection is therefore one that should continue, and that should be refocused on the more substantive legal questions, which we believe would most prominently include a wider debate addressing the legal identity of AI.  A valuable and substantive contribution to this debate may well come from the abovementioned decision by the Australian Federal Court, and from similar cases that are pending before other courts.

While outside the scope of this statement, we nevertheless note for interest that we understand that the Australian Federal Court, in the abovementioned case, held the view that the entitlement provisions of the Australian patent laws, prescribing who is entitled to seek patent protection, can be interpreted sufficiently broadly to include an owner of AI in the case of an AI created invention, without any proof of entitlement being required, at least on the basis of the ownership of the AI and its source code.  In this regard it is worth noting that the relevant provisions include broad language, including that title to the invention may be “derived” from the inventor.

The same conclusion would not necessarily follow in South Africa, since the Patents Act does not include provisions mirroring the relevant provisions of the Australian patent laws.

In South Africa, the entitlement provisions in the Patents Act provide that an application for a patent in respect of an invention may only be made by the inventor or by any other person acquiring from the inventor the right to apply which, as indicated above, is associated with a corresponding requirement to supply proof of entitlement to apply.  How widely our courts would be willing to interpret this provision remains to be seen, but it can be said that it is textually narrower than the corresponding Australian provisions.

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