http://ipkitten.blogspot.com/2021/08/artificial-intelligence-system-as.html
Late last month, South Africa’s Companies and Intellectual Property Commission (CIPC) became the first Patent Office in the world to award a patent that names an artificial intelligence as the inventor of a product. In the application by Dr Thaler, an artificial intelligence system (AI system), which has been described as a device for the autonomous bootstrapping of unified sentience (DABUS), was named as the inventor. The decision is significant considering that the applicant’s previous applications in the UK, EPO and at the USPTO were unsuccessful because DABUS was named as inventor.
In each of these jurisdictions, the question was whether the relevant patent laws may be interpreted as permitting an AI system (i.e. a machine/device) to be named as the inventor in a patent application. This question is also relevant in the case of South Africa.
Inventorship under South Africa’s patent laws
Patent applications in South Africa are mainly governed by the Patent Act and the Patent Regulations, which stipulate how the prescribed forms may be completed and what documentation may accompany applications.
Unlike US patent law that expressly defines an “inventor” to mean “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention”, South Africa’s patent laws provides no literal definition of an “inventor”. Instead, section 27(1) of the Patent Act, in stipulating who may apply for a patent, mentions “an inventor or any other person acquiring from him the right to apply” or both the inventor and such other person as those qualified to apply for patent in South Africa. [Does “him” connote natural person solely?]
Section 30(1) of the Patent Act then goes on to stipulate the form of application for a patent requiring applications to be made “in the prescribed form” and on “payment of the prescribed fee” and accompanied by a “provisional specification” or “complete specification”. Other requirements are that applications contain an address for service within South Africa and that a “declaration in the prescribed form” be lodged with the registrar of patents. Proof of title or authority to apply is required only in the case of applications made by persons other than the inventor. See Section 30(4). The Act does not indicate the nature of the “proof of title or authority to apply”. However, Regulation 22(1)(d) of the Patent Regulations stipulates that an application for a patent shall be made on Form P1 and “where the applicant has acquired a right to apply from the inventor”, the application shall be accompanied inter alia by…”an assignment or other proof, to the satisfaction of the registrar, of the right of the applicant to apply”. [underlining mine]
That said, the DABUS patent granted by the CIPC was based on an application under the Patent Cooperation Treaty (PCT) to which South Africa is a signatory. Such applications are primarily governed by sections 43A to 43F of the Patent Act. Section 43F excludes the applicability of section 30(1) which deals with the form of application for a patent, 30(5) which deals with date of application and lodgement of application and 30(6) of the Patent Act which deals with when an application may not be denied a lodging date. It follows then that such PCT applications are to be made in accordance with the PCT and Regulations under the PCT.
Under the PCT Regulations, applications are made via a request containing a petition, title of the invention, indications concerning the applicant and the agent. See Rule 4.1. Indications concerning the inventor are required “where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application”. See Rule 4.1(a)(iv).
This leads back to how South Africa’s patent laws intends inventors to be named in the filing of patent applications.
AI systems are capable of inventing and have invented patentable products and seeing as the question of the identity of an inventor is a question of fact, it would be factually incorrect to name a natural person as inventor when an AI system is responsible for an invention.
Following from the above provisions of the patent laws in South Africa and the relevant PCT provisions, one may then argue that where a person other than the inventor files a patent application in South Africa, the proof of the applicant’s right to apply has to be either an assignment or whatever form of proof that satisfies the registrar of patents.
Identifying the inventor is a formality in patent applications. In other words, it is a requirement that is to be met before a patent application can stand the chance of being considered and granted (or refused). For a jurisdiction like South Africa that does not presently conduct substantive examination of patent applications, compliance with formal requirements such as identifying the inventor in the patent application documents would put a patent application well on its way to being granted.
Thadlar and Naidoo have argued in support of the CIPC decision stating that it aligns with South Africa’s adherence to a purposive approach to statutory interpretation where the purpose of a given statute is looked to for its interpretation. In the case of whether DABUS may be named as inventor of the product, they argue that a purposive approach would involve asking: “what is the purpose of making legal provisions for patenting of inventions?” Looking to South Africa’s IP Policy Phase 1, they argue that patents serve as an important policy instrument in promoting innovation, economic growth etc. and that recognising DABUS as inventor would serve such purpose.
Yet, naming an AI system as inventor may be all well and good for reflecting reality and avoiding uncertainty. And in the case of South Africa, one may persuasively argue that as far as the registrar of patents is satisfied, AI systems may be recognised as inventors. However, as persuasive as this school of thought may be, it overlooks responsibilities and potential liabilities as regards inventions. Basically, a purposive approach to considering the formal requirements for patent applications should go beyond asking the purpose of providing for patenting of inventions, and also ask the purpose of requiring that an inventor be named. Putting it in another way, is the purpose of naming inventors only about deciphering responsibility for the inventive effort or should it be also about imputation of liability for harm done or choices made in relation to the invention?
If humans/natural persons are the only permissible entities to be named as inventors and if humans should be the only permissible inventors, perhaps it is because of the need for a value system in how and what inventions are made (and defended and protected). This may be the more appropriate way to ensure ethical standards while engaging in in inventive activities. Society depends on these essential values.
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