Can products or processes created by artificial intelligence (AI) be granted patent rights?
With the rise of generative AI (GenAI), this is but one among many uncertainties – be it legal liabilities or regulatory exposure – that courts will be asked to contemplate over the years to come.
Read: Insurance leaders urged to chart ethical course in the age of generative AI
In December last year, the United Kingdom’s Supreme Court ruled that an AI cannot qualify as an inventor under the UK Patents Act of 1977. Consequently, patents cannot be awarded for inventions generated by AI.
In the case of Thaler v Comptroller-General of Patents Designs and Trade Marks, the court reviewed Dr Stephen Thaler’s requests for patents concerning two products and processes, supposedly created independently by an AI called DABUS (Device for the Autonomous Bootstrapping of Unified Sentience). Dr Thaler submitted these applications on October 17 2018 and November 7 2018, for a novel food or beverage container and an innovative emergency light beacon. Interestingly, he didn’t attribute these inventions to any human inventor.
Tristan Marot, an associate at Norton Rose Fulbright, highlighted the main problem in an article on the firm’s website: figuring out if an AI system like DABUS could be considered an inventor according to the Patents Act.
“The hearing officer for the Comptroller-General of Patents decided that the applications should be considered withdrawn because DABUS did not qualify as an inventor within the meaning of the Patents Act, Dr Thaler was not entitled to apply for patents since the supposed inventions were autonomously made by the DABUS and Dr Thaler failed to identify any natural person as the inventor or explain his right to the patents,” said Marot.
Dr Thaler’s appeals to the High Court and the Court of Appeal were unsuccessful. The courts upheld the Hearing Officer’s decision, emphasising that an inventor, as defined in the Patents Act, must be a natural person. The court found no basis in the law for Dr. Thaler’s claim to apply for and obtain patents simply by owning the AI system that generated the inventions.
Dr Thaler’s attempts to appeal to the High Court and the Court of Appeal failed. The courts supported the decision of the Hearing Officer, stressing that, according to the Patents Act, an inventor must be a natural person, aka a human being.
The court concluded that Dr Thaler couldn’t claim patents solely based on owning the AI system responsible for creating the inventions.
“This judgment reaffirmed these conclusions, stating that DABUS could not be an inventor as it was not a natural person, and thus, Dr Thaler, who was not the inventor of the inventions described in the applications, had no independent right to obtain a patent for them,” said Marot.
The judgment also clarified that the Hearing Officer was correct in deciding that the applications should be taken to be withdrawn due to failure to satisfy the requirements of Section 13 of the Patents Act, which necessitates the identification of a human inventor.
According to Marot, the key point in the court’s decision hinged on how Sections 7 and 13 of the Patents Act were interpreted.
“Section 7 outlines the right to apply for and obtain a patent, with subsection (3) defining an inventor as the actual deviser of the invention, implying a natural person. Section 13 emphasizes the inventor’s right to be mentioned in any granted patent and requires applicants to identify the inventor(s) and explain the derivation of their right to the patent. Rule 10 further elaborates on the mention of the inventor and the consequences of failing to comply with these requirements.”
Important is that Dr Thaler argued he accrued the rights to the patent because he owned DABUS, which was described as functioning autonomously to generate the inventions, so he was entitled to the fruits of the machine similar to how a farmer who owned the cow, would own the calf. The Court dismissed this argument.
DABUS was not an employee nor any similar relationship that could pass inventorship, as DABUS could not satisfy the requirements to be an inventor.
Dr Thaler claimed he accrued the patent rights because he owned DABUS, which was described as an AI functioning independently to create inventions. He argued it was akin to a farmer owning a cow and claiming ownership of the calf. However, the court rejected this argument. DABUS couldn’t be considered an employee or in any similar relationship that could transfer inventorship since it didn’t meet the requirements to be recognised as an inventor, the court found.
Marot explained that the doctrine of accession was not applicable in this scenario.
“It was not a case where tangible property was producing further tangible property but rather the creation of concepts for new and non-obvious devices and methods, and descriptions of ways to put them into practice, all of which, so Dr Thaler maintains, have been generated autonomously by DABUS,” he said.
Marot pointed out that Dr Thaler’s approach was curious, because, as noted by the Court, it “has never been Dr Thaler’s case that he was the inventor and used DABUS as a highly sophisticated tool. Had he done so, the outcome of these proceedings might well have been different”.
What South African legislation says
According to Diogo Antunes, legal manager and trademark and patent attorney at Inventa, South African IP law currently does not explicitly account for AI inventorship. He says this could lead to a legal grey area that could potentially stifle innovation or enable exploitation.
“Hence, it becomes crucial to explore how these legal structures can be adapted to accommodate AI’s role in inventing, which may involve the creation of a sui generis right,” says Antunes.
At present, South African IP law is governed by several legal frameworks, such as the Copyright Act and the Patents Act.
Antunes explains that within the realm of patent law in general, an inventor is typically a person who contributes to the invention’s conception.
“However, the arrival of AI as potential ‘inventors’ suggests this definition may be inadequate,” he says.
South African patent law refers to the inventor in the masculine form as a person.
“Unfortunately, in terms of definitions, the law did not advance with the definition of the term Inventor, despite having a definition of Patentee. Thus, it becomes necessary to verify what the law stipulates implicitly,” says Antunes
As to who may apply for a patent, Article 27 of the patent law stipulates:
(1) An application for a patent in respect of an invention may be made by the inventor or by any other person acquiring from him the right to apply or by both such inventor and such other person.”
The regulation that supports the patent law also refers several times to the human nature of the inventor, he says.
Article 22 of the regulation, under “Application for the grant of patents” reads:
- d) 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.
Antunes says this means that it would be necessary to present an assignment document between the inventor and the applicant.
“However, the structure of such a document is predicated on the basis of a human inventor, considering that a legal transaction is born out of the will of the parties involved,” he says.
He notes that the address of the inventor is also often mentioned.
“An AI system does not have an address.”
Antunes says that by implicitly structuring legal documents and processes around human agents, the law seems to maintain that inventions, at their core, are human endeavours.
“Therefore, extending these legal structures to accommodate AI-generated inventions would not just be a matter of updating the paperwork. It would represent a fundamental shift in how we conceptualise the nature of the invention and the legal structures that protect it,” he says.
The DABUS patent in South Africa
But hold on to your hats.
On July 28, 2021, the Companies and Intellectual Property Commission (CIPC) made history by publishing the acceptance of South African patent no. 2021/03242, known as the SA DABUS patent, in the South African Patent Journal. This marked the first time a patent office globally granted a patent, acknowledging an AI system as an inventor.
Dr Thaler simultaneously filed corresponding patent applications in several countries, including the UK, the United States, the European Patent Office (EPO), Germany, New Zealand, Taiwan, India, Korea, Israel, and Australia. However, the patent applications in all these countries, except South Africa, were rejected. The primary reason cited overall was the requirement for a natural person to be listed as an inventor on a patent application.
Antunes says it’s essential to understand the context of patent processing in South Africa to grasp the full implications of this decision.
“Unlike some other patent offices, South Africa’s patent office does not undertake substantive examination of patent applications. Instead, it focuses on ensuring that applications comply with the necessary formalities.”
This essentially means, he says, that, within this process, no substantial decision was technically made regarding the worth of the invention or the suitability of an AI system as an inventor.
“The patent office didn’t formally examine the legitimacy of the AI as an inventor but primarily concerned itself with the completeness and correctness of the application forms.”
According to Antunes, this raises questions about the legal formalities involved in patent applications, particularly those related to inventorship and ownership.
“For instance, the standard requirement of an assignment document – which transfers rights from the inventor to the applicant – presents a conundrum in this case. As AI lacks legal personality, it cannot enter into a legal transaction, raising questions about the formal validity of the application.”
He further points out that there is no evidence or explanation regarding how Dr. Thaler obtained the rights to the AI-generated invention.
“Without an assignment or other proof of transfer of rights from DABUS to Dr Thaler, this omission presents potential formal inconsistencies in the application process,” says Antunes.
Read the full UK Supreme Court judgment here.
