19 October 2021

South Africa Grants A Patent With An Artificial Intelligence (AI) System As The Inventor – World's First!!

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In July 2021, the South African Patent Office granted a patent for a patent application relating to "food container based on fractal geometry" with an Artificial Intelligence (AI) system named "DABUS"...
India Intellectual Property
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In July 2021, the South African Patent Office granted a patent for a patent application relating to "food container based on fractal geometry" with an Artificial Intelligence (AI) system named "DABUS" (Device for Autonomous Bootstrapping of Unified Sentience) listed as an inventor. This happens to be a world's first, wherein an AI system has been recognized as an inventor. Why has recognition of AI created so much buzz in IPR? What's the fuss with the inventorship of AI all about?

Artificial Intelligence (AI) has gained quite a lot of momentum in the recent decade and is growing exponentially ever since. AI with all the developments and iterations is being honed to be more sophisticated and intuitive. To this day AI has been developed to a level, wherein AI is capable of carrying out certain tasks without human intervention. DABUS is one such AI system created by Stephen Thaler, that he believes was the sole inventor of two new discoveries - a fractal container and a neural flame. Stephen Thaler, the CEO of Imagination Engines, Inc., is a pioneer in the field of AI and programming. Stephen Thaler filed patent applications in 17 jurisdictions that include US, Europe, Australia, and South Africa, based on what Stephen believes, the invention was created solely by DABUS itself, and thereby naming only DABUS as an inventor. However, Stephen lists himself as an Assignee to the said patent applications and would hold the rights to the patent applications if the patent application meets the requirements by the respective Patent Office.

With all the developments in the field of AI, debates on AI being included as an inventor has been a hot topic for the intellectuals. Debates have been equally weighed with inventors wanting AI to be recognized as an inventor and few IP experts resisting the same. Amidst this discussion, the South African Patent Office broke the ice by granting patent to an application filed by Stephen with DABUS listed as a single inventor, which came as a surprise to the global community.

However, there is a catch. South Africa is a non-examining country, implying that the patent applications filed in the country are not examined to check if the requirements of patentability are met as is the case in US or India. Furthermore, the South African Patent Office does not mandate the inventor to disclose any prior art. In light of this, any patent application filed in South Africa results in getting a grant as long as all the formal requirements are met. In any case, the granted patent can be opposed by a third party and can be invalidated by proving so. Until then, the patent application stands valid in the jurisdiction. With South Africa granting patent to the patent application with DABUS listed as an inventor, many IP experts have criticized the decision and called it an oversight by the Patent Office.

Two days after the South African patent grant, on July 30, 2021 Justice Jonathan Beach of the Federal Court of Australia, in " Stephen Thaler and Commissioner of Patents" ruled in favor of Stephen's team allowing AI to be listed as an inventor and said that "an inventor as recognized under the Act can be an artificial intelligence system or device. But such a non-human inventor can neither be an applicant for a patent nor a grantee of a patent.". This comes after scrutinizing the Australian Patents Act 1990 and failing to find definition for "inventor". The ruling is a big step forward for Stephen and his team.

On the other side of the spectrum, the UK Patent Office, the European Patent Office and the USPTO have rejected the patent application in the formal examination phase. The England and Wales High Court concurring with the UKIPO rejected the patent applications by Stephen's team. The Court held that AI is not a natural person and therefore cannot be interpreted as an inventor under the UK Patents Act 1977. The European Patent Office also has rejected the patent application on the grounds that the AI systems or machines at present have no rights because they have no legal personality as compared to a natural or legal person and cannot have any legal title over their output.

The USPTO issued a notice to file missing parts for each of the applications requiring Stephen to identify an inventor by his or her legal name. In light of this, Stephen filed several petitions requesting reconsideration of the notice. The USPTO denied the application on similar grounds cited by the UK and European Patent Offices. The USPTO having considered case laws (University of Utah v. Max-Planck-Gesellschaft and Burroughs Wellcome Co. v. Barr Labs., Inc. and Beech Aircraft Corp. v. EDO Corp.) concerning inventorship and the Manual of Patent Examining Procedure (MPEP) stated that the patent application does not comply with the 35 U.S.C § 115(a), as DABUS (or invention generated by AI) is being listed as an inventor and the current statutes, case laws and USPTO regulations and rules limit inventorship to natural persons. In response to this, Stephen and his team filed a suit against the Under Secretary of Commerce for Intellectual Property and Director of the USPTO as well as the USPTO in the Virginia federal court.

On September 02, 2021, the U.S. District Judge Leonie Brinkema in Alexandria sided with the USPTO on the matter stating that the USPTO pointed to the fact that, contrary to plaintiffs assertion that the "statutes relied upon by Defendants were passed long before AI-[g]enerated [i]nventions were a reality" and that if Congress had contemplated this artificial intelligence issue, it would have included artificial intelligence machines within the definition of "inventors"; Congress defined an "inventor" as an "individual" through the America Invents Act in 2011, when artificial intelligence was already in existence. See Pub. L. 112-29, § 3(a), 125 Stat. 285 (Sept. 16, 2011); see also H.R. Rep. No. 112-98 (June 1, 2011), available at 2011 U.S.C.C.A.N. 67, 67. Accordingly, plaintiffs policy arguments do not override the overwhelming evidence that Congress intended to limit the definition of "inventor" to natural persons. Brinkema also added that As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship. But that time has not yet arrived, and, if it does it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.

The U.S. District Judge thereby ruled that the federal law requires that an "individual" take an oath that he or she is the inventor on a patent application, and both the dictionary and legal definition of an individual is a natural person.

In light of the foregoing, how structured is the Indian Patent Law in this matter is a matter under consideration. The Indian Patent Act, 1970 does not have a specific definition for the term "inventor". In India, an application for patent can be made by a "person" who is True and first inventor. Here the term "person" also includes the Government as per the Indian Patent Act, 1970. However, the Indian Patent Act, 1970 does provide sufficient light on the term "Assignee".

In addition, there are very few case laws in India that correspond to "inventorship" of a patent to rely upon.

Also, assuming a case where AI is allowed to be listed as an inventor, more of hurdles would have to be addressed like:

  • Transfer of patent rights
  • Obtaining patent rights
  • Patent oppositions
  • Inclusion of AI as a party in a contract

The above-mentioned rights, under the current Indian Act are granted to a "person" and AI would be unable to perform such tasks. Therefore, with the current policy it is unlikely that an AI system would be allowed to name as an inventor or a co-inventor. Furthermore, in cases of transgression, accountability also has to be considered. For an AI system to be recognized as an inventor, the Patent Act, 1970 and the Patent Rules, 2017 have to be respectively amended and the term "inventor" has to be explicitly defined with AI system included in the definition. Also, AI system in current time is not as sophisticated and intuitive to be considered as a sole inventor. AI still requires a lot of development. Until then, inclusion of AI as inventor in India would only have ambiguity.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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