At the Intersection of Technology, Law, and Business
September 08, 2021 - Artificial Intelligence, Intellectual Property

AI as a Patent Inventor – an Update from South Africa and Australia

In the Public Eye: USPTO Issues Report on AI

Although the European, U.S., and UK Patent Offices have denied patent applications on the grounds that an AI system cannot be listed as an inventor, not every country seems to be following that approach and some may be set to buck the trend.

Last year, we reported on the first European Patent Office (EPO) ruling on its approach to patent applications that designate artificial intelligence (AI) systems as inventors. Both the UK Intellectual Property Office (UKIPO) and the EPO reasoned that AI systems cannot be inventors. However, South Africa and Australia did not follow suit this year.

What did DABUS “invent”?

The “Artificial Inventor Project,” an international group of patent attorneys, filed patent applications directed to inventions that were supposedly “invented” by DABUS, an AI system developed by Dr. Stephen Thaler. The applications are directed to a light-emitting device that could be used as an emergency signal beacon and a food container.

Success in South Africa could be premature

A patent application was granted in South Africa by the Companies and Intellectual Property Commission, listing DABUS as the inventor and Dr. Thaler as the owner of the patent.

A contributing factor to the grant is the lack of definition of “inventor” in South African patent law and the structure of the local patent system. Patent applications are not formally examined prior to their grant – they will be granted if they meet the required formalities as a minimum.

Thus, the local patent office did not undertake a substantive examination of the patent application ahead of its grant.

Now the patent is vulnerable to applications made against it that are filed in the South African court. Any third party may apply to the Court of the Commissioner of Patents to revoke the patent. The patent could be revoked for a number of grounds, including lack of inventiveness, lack of novelty, and most pertinently, because Dr. Thaler, who is not the inventor, was not entitled to apply for it.

The Federal Court of Australia’s decision

In Thaler v Commissioner of Patents [2021] FCA 879, the Australian court reasoned that the ordinary meaning of “inventor” does not exclude non-humans. It also found that in patent law, unlike copyright law, there is no requirement for a human inventor.

Dr. Thaler argued that the objectives of the relevant legislation supported AI systems being recognized as inventors because it is intended to promote technological innovation and the dissemination of technology.

The court also considered that various persons can contribute to the output of an AI system, and that recognizing the AI system as the inventor would avoid uncertainty as to who should be recognized for the inventive process.

While the court was only faced with deciding whether DABUS could be an inventor, it also discussed whether Dr. Thaler could be the patent grantee. The court found in favor of Dr. Thaler by determining that he could be a grantee since he derived title to the invention. Dr. Thaler owns and controls DABUS, therefore its inventions are in Dr. Thaler’s possession.

Status of global DABUS applications

  • In the UK, Dr. Thaler appealed to the UK Court of Appeal in July 2021, after rejections from the UKIPO and the UK High Court.
  • A hearing date has been set for a European appeal in December 2021.
  • The Deputy Commissioner of Patents in Australia has four weeks to appeal the July 30, 2021 decision.

Further similar patent applications involving issues of AI inventorship have been unsuccessful in Canada, China, Taiwan, Germany, and the United States. There are still pending applications in India, Israel, Japan, and South Korea. Given the fate of the DABUS applications thus far, it is advisable to continue listing the individuals, not the AI systems, as the inventors on patent applications.