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Patenting AI inventions – robots aren't going to work for free

While South Africa’s Copyright Act protects non-human inventors, the Patents Act does not, which is an unsatisfactory position.

Johannesburg, 25 Apr 2023
Wesley Justin January, candidate attorney and Tim Ball, partner at Webber Wentzel.
Wesley Justin January, candidate attorney and Tim Ball, partner at Webber Wentzel.

The patent system exists to promote the creation, disclosure and implementation of useful innovation, by giving inventors – who until recently were always humans – exclusivity in their inventions.

By 1992, the law had recognised that literary, dramatic, musical and artistic works might be generated by computers and amended the Copyright Act 98 of 1978 (Copyright Act) accordingly. That Act now provides that the "author, in relation to a literary, dramatic, musical or artistic work or computer program which is computer-generated, means the person by whom the arrangements necessary for the creation of the work were undertaken". This provision considers the person who made the necessary arrangements to be the author, even if they made no creative contribution. Ownership of copyright in a computer-generated work is determined with reference to the deemed author. 

However, the Patents Act 57 of 1978 (Patents Act), which regulates the protection of new and useful inventions, does not make any special provision for computer-generated inventions. With the rising popularity of ChatGPT and other artificial intelligence (AI) tools, the patent protection of computer-generated inventions has become a hot topic.

In June 2021, the South African patent office granted a patent on an application that cited an AI computer program, referred to as DABUS, as the inventor. The patent was granted to the developer of DABUS, Dr Stephen Thaler, on the basis that he was the successor in title to the invention as owner of the AI inventor. The South African patent is the only patent granted for the invention, although several "family" applications for the same invention were filed in jurisdictions around the world.

The different result in South Africa may be at least partially attributable to the lack of examination by the South African patent office. But the issue has been contentious around the world, with at least one court (in Australia) finding in favour of the patentability of the invention (although that decision was ultimately overturned on appeal). Irrespective of the results in the litigation, questions around the patentability of computer-generated inventions focus attention on the underlying philosophy of the patent system and are well worth considering.

In South Africa, the Patents Act sets out the substantive requirements for patentability of an invention without reference to the identity of the inventor. Section 25(1) provides that:

"A patent may, subject to the provisions of this section, be granted for any new invention which involves an inventive step and which is capable of being used or applied in trade or industry or agriculture."

These basic requirements are spelled out further in the remainder of section 25 but, at face value, nothing in section 25 stops a computer-generated concept from being a patentable invention.

However, there is still a question about title, ie, who (if anyone) should be entitled to apply for a patent for an AI-created invention?

Section 27(1) provides that an application for a patent 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".

Clearly, lawmakers considered that any invention would be made by a human inventor, who would either file a patent application in their own name, or transfer their rights in the invention to another person (natural or juristic) to file the patent application. In contrast, an AI "inventor" is not a person with legal capacity to acquire legal rights in its own name or transfer those rights to another person. The Patents Act, therefore, does not provide a mechanism for a natural or juristic person to obtain the right to apply for a patent for an AI-created invention.

Following similar reasoning, patent offices and courts in other jurisdictions refused applications by Dr Thaler for the DABUS inventions.

The result is that in these jurisdictions no one can obtain a patent for an invention conceptualised by a non-human entity. This position may be regarded as unsatisfactory, as it appears to frustrate the purpose of the patent system in incentivising the creation, disclosure and implementation of useful innovation.

However, even accepting that computer-generated inventions should be protectable, the question of who should own the rights to them presents a significant policy challenge. To illustrate this problem, it should be noted that the Copyright Act attributes authorship of computer-generated works to the person who arranged for the making of the work, whereas Dr Thaler claimed ownership based on his position as "owner of the AI inventor". The question has particular significance given the potential for those with access to AI tools to monopolise invention across all fields of technology.

In conclusion, while the Copyright Act makes provision for computer-generated works, the Patents Act does not provide for AI-created inventions. This has raised important legal questions around the protection and ownership of AI-generated IP. As technology continues to advance at an unprecedented rate, this issue is likely to become even more important and it will be necessary for the law to evolve to provide adequate protection for the intellectual property rights of AI-created works.

In our view, these questions should be answered at a policy level by legislators, considering various relevant factors. These include the nature of inventive activity that should be incentivised under the patent system, taking into account both the need for incentives to encourage investment in beneficial research and development, and the potential danger that inventive capability may be monopolised by those few with access to the necessary tools.

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