SOUTH AFRICA - THE FIRST COUNTRY IN THE WORLD TO REGISTER A PATENT FOR AN INVENTION MADE BY ARTIFICI

Artificial Intelligence ("AI") is a highly controversial topic which is the subject of many conversations worldwide. One such example of AI which has recently become the topic of conversation is the Device for the Autonomous Bootstrapping of Unified Sentience ("DABUS"). DABUS is a "creativity machine" invented for the purpose of independently conceiving new ideas and creating new inventions. Since its inception DABUS has, amongst other things, invented an emergency warning light, a food container that improves grip and heat transfer and an interlocking container based on fractal geometry (the "Container").

South Africa is currently leading the way when it comes to granting intellectual property rights to AI by being the first country in the world to grant a patent for an invention made by DABUS (the Container) and any AI in general.

This article deals with the rejection of patent applications for DABUS' inventions in various jurisdictions worldwide, the approval of the patent applications for DABUS' invention in South Africa, and South Africa's roll in history by its approval of the patent application for DABUS' invention.

Rejection of the DABUS patent application in other countries:

In 2018 Doctor Stephan Thaler ("Dr Thaler"), the creator of DABUS, filed various patent applications for DABUS' invention of the Container in at least 11 (eleven) countries including South Africa, the European Union, the United Kingdom, the United States, Brazil, India, China, Japan and Taiwan.

The applications raised controversy in that Dr Thaler was not the inventor of the Container, but rather, the inventor thereof was something that he owned, being DABUS. For this reason, Dr Thaler's application for patent protection failed in the European Union, the United Kingdom and the United States as he was not seen as the true inventor thereof.

In an English court decision, the court found that Dr Thaler's application for a patent to be registered over the Container should fail for the reason that the Patent Act of 1977, defined an "inventor" as an "actual deviser" of the invention, which was interpreted in the case of Yeda v Rhone-Poulenc [2007] UKHL 43 as a "natural person who came up with the inventive concept". Accordingly, under English law, an inventor cannot include juristic persons, like companies, nor things, like machines and AI. It followed that as DABUS could not be an inventor, and as the inventor needs to apply, or otherwise transfer his right to apply for the patent to Dr Thaler (which DABUS also cannot do), Dr Thaler was not entitled to patent protection.

Approval of the DABUS patent application in South Africa:

Dr Thaler's application for patent protection of the Container created by DABUS was received differently in South Africa. In terms of South African law, an "inventor" is not defined in the Patents Act No. 57 of 1978 ("Patents Act"). Therefore, an "inventor" is not limited to a natural person. However, the "patentee" of a patent right has to be a "person". It follows that although it is not prohibited by statute that an invention be made by a thing other than a natural person, the holder of the patent right must be a person.

Although DEBUS can therefore not own the patent, Dr Thaler can. With Dr Thaler applying to be the patent holder and DEBUS being the inventor, the patent application was accordingly approved in South Africa. Another reason for the successful registration of the patent over the Container was due to a technicality in the patent registration process. The Patent Act, like English law, requires the applicant to be either the inventor or a person who acquired the right to apply for the registration of the patent from the inventor. As is the case in terms of English law, AI cannot have the right to apply for a patent registration. However, as the invention claims priority from a Patent Cooperation Treaty ("PCT"), it is assumed that assignment took place prior to the filing of the patent registration application in South Africa. It was therefore deemed that Dr Thaler had the authority to file the patent application (and that DEBUS gave him such authority - although it can be questioned to what extent AI can grant such authority) prior to the patent application having been filed in South Africa.

South Africa's role in creating history regarding registration of patents created by AI:

What followed from the above, was that on 28 July 2021 the Companies and Intellectual Property Commission ("CIPC") publicised the patent registration over the Container thereby resulting in South Africa making history by becoming the first country in the world to grant a patent to an invention made by AI.

Concluding remarks:

Whilst the successful registration of the patent to Dr Thaler has put South Africa in the spotlight, the fact that such registration involved a technicality perhaps means that the time is ripe for South African law (and perhaps the laws of other jurisdiction) to be adjusted to suit modern times which will accommodate inventions containing patentable material created by AI.

VDMA's team of experts are available to assist you and your business with any intellectual property or AI requirements you may have.