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It is not uncommon to see a robotic cleaner mopping the floor when landing or transiting through Changi airport in Singapore. These robots have been programmed to actively look for spills to mop up. The artificial intelligence (AI) of these robotic cleaners enables them to perform the functions of a cleaner 24-hours a day without any need for human supervision and/or intervention. Another example is Henn-na Hotel in Japan that boasts of being the world-first hotel completely staffed by robots. From the check-in to check-out, everything is handled by robots.
In 2018, Dr Stephen Thaler announced that his AI system, Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), invented new products on its own initiative, without any human intervention. The two new inventions that were created by DABUS are a food container suitable for liquid and solid products and a device for attracting enhanced attention.
Dr Thaler filed patent applications in various countries for the invention and named his AI system, DABUS, as the inventor. This sparked a debate in the intellectual property industry and the pertinent question was whether inventions made by AI qualifies for a patent.
Section 25(1) of the South African Patents Act 57 of 1978 states that a patent will be granted for an invention that is ‘new’, has an ‘inventive step’ and has utility. Furthermore, s 27(1) stipulates that an application for an invention can only be made by the inventor or ‘any other person’ acquiring such right from the inventor or both the inventor and such other person. Does this imply that an AI system can be classified as an inventor?
A ‘person’ is defined as a ‘human being regarded as an individual’ (www.wikidoc.org, accessed 1-10-2022). It can be said that a person is a human being and AI systems are not classified as human beings. In addition, the drafters of the South African Patent Act most likely envisioned human beings and not robots as inventors. Thus, in that context, an AI system may not be regarded as an inventor according to the South African Patent Act.
Ironically, Dr Thaler filed a patent application in South Africa (SA), named DABUS as an inventor and was granted a patent. As surprising as it may sound, it is important to understand how patent officers examine patent applications that are received. When a patent application is made, the applications are examined based on the formalities and the substantive nature of the application. A formal examination process verifies that all necessary documents such as a power of attorney and patent specification were submitted, and that the required fees have been paid timeously. On the other hand, a substantive examination examines the patent specification to determine if the invention being claimed is novel, has an inventive step and can be used in SA. Other substantive aspects of the invention are also scrutinised at this stage to determine if it meets the requirements of the Patents Act, and a patent can be granted. Most patent office’s offer both a formal and substantive examination of all patent applications received. However, SA conducts only formal examinations of all patent applications received. It is important to note that the South African Patent Office, the Companies and Intellectual Property Commission, have initiated processes to begin substantive examinations, but this is yet to be implemented. This would explain why Dr Thaler succeeded in obtaining a patent in SA for an invention in which the inventor is not a person.
All patent applications designated to the United Kingdom (UK) are submitted to the UK Intellectual Property Office (UKIPO). The UKIPO conducts both a substantive and formal examination of all patent applications. Dr Thaler’s patent applications that were submitted to the UKIPO for inventions created by DABUS were rejected. In rejecting the applications, the UKIPO noted that Dr Thaler had failed to comply with s 13(2) of the UK Patents Act 1977, which required that a person is identified as the inventor, as well as indicating how an applicant had derived his rights from the inventor. Dr Thaler argued that no persons was mentioned as the inventor as required by s 13(2) because his AI DABUS was the sole inventor. Dr Thaler’s argument was rejected, and his patent application was deemed to be withdrawn. In an attempt to overturn the rejection, Dr Thaler launched a High Court proceeding arguing, inter alia, that the UKIPO had misinterpreted the UK Patents Act 1977.
In its ruling, the High Court rejected Dr Thaler’s argument and dismissed his application. The judge held that only a natural person could be considered as an inventor and the UKIPO was correct in its interpretation of the Patents Act as applied to Dr Thaler’s patent applications. Unperturbed by the High Court ruling, Dr Thaler launched an appeal. In his appeal application, Dr Thaler sought the Appeal Court to, inter alia, determine if the UK Patents Act 1977 require that an inventor be a person. In dismissing the appeal, the court held that the UKIPO and the High Court were correct in their interpretation of the Patents Act 1977.
The United States (US) Patent and Trademark Office (USPTO) is responsible for receiving all patent applications in the US. Just like the UKIPO, the USPTO conducts a substantive and formal examination of all patent applications received. Dr Thaler’s patent applications naming DABUS as the inventor that were filed in the US were rejected by USPTO. An appeal that was filed at the United States District Court for the Eastern District of Virginia was also dismissed. Similar to the court cases that were instituted in the UK, Dr Thaler had sought, inter alia, a declaration that inventions by AI should not be rejected on the basis that no natural person was identified as the inventor. In defending its decision to reject the patent applications, the USPTO noted that public comments obtained from a conference on AI rejected the notion that AI systems could be recognised as inventors because human interventions were still required. Furthermore, the court held that the US Patents Act (USC Title 35) refers to an inventor as an individual and an AI has never been considered as an individual.
The IP Australia (Australian Patent Office) conducts substantive and formal examinations of patent applications. A patent application naming DABUS as an inventor was filed in Australia. The Deputy Commissioner of Patents, in considering the patent applications, noted that the Australian Patents Act 1990 does not define an inventor and thus, he relied on the ordinary English meaning of an inventor which refers to a natural person. Furthermore, s 15 of the Australian Patents Act 1990 stipulates that a patent for an invention may be granted to a person who is an inventor or has acquired rights from the inventor. As a result, it was concluded that the ordinary meaning of inventor is inherently human. This led to the patent applications being rejected by the Australian Patent Office and the applications were deemed to have lapsed for failing to comply with patent requirements.
Not surprisingly, Dr Thaler launched a proceeding at the Federal Court of Australia challenging the decision of the Australian Patent Office. In considering the applications before the court, the judge noted that no specific provisions in the Australian Patent Act 1990 expressly rejects the proposition of an AI system being an inventor. Furthermore, copyright law, which requires a human author or existence of moral rights may be interpreted as excluding non-human inventors, but no aspect of patent law could be interpreted as excluding non-human inventors. The judge also noted that the Deputy Commissioner was correct in stating that the Patents Act does not define the word ‘inventor’. Thus, the ordinary meaning of the word ‘inventor’ must be ascribed. In ascribing the ordinary meaning of the word ‘inventor’, the judge stated:
‘… as the word “inventor” is not defined in the Act or the Regulations, it has its ordinary meaning. In this respect then, the word “inventor” is an agent noun. In agent nouns, the suffix “or” or “er” indicates that the noun describes the agent that does the act referred to by the verb to which the suffix is attached. “Computer”, “controller”, “regulator”, “distributor”, “collector”, “lawnmower” and “dishwasher” are all agent nouns. As each example demonstrates, the agent can be a person or a thing. Accordingly, if an artificial intelligence system is the agent which invents, it can be described as an “inventor”’ (Thaler v Commissioner of Patents [2021] FCA 879).
Furthermore, the judge stated the following in response to the commissioner’s reliance on the dictionary meaning of the word ‘inventor’:
‘The commissioner’s reliance on dictionary definitions is problematic to say the least.
First, there are competing dictionary definitions of “inventor” that merely define the term as the noun corresponding to the verb “invent”, without describing the agent which invents. So, which dictionary do you use? And what meaning, and in what context?’
In ruling in favour of Dr Thaler, the judge emphasised that the Patents Act should be interpreted in a way that promotes economic wellbeing and technological innovation regardless of whether the innovation was made by a natural person or an AI system. According to the judge, an inventor includes an AI system, such as DABUS. An appeal has been filed against the decision of the judge and the matter is still pending.
Dr Thaler submitted patent applications to patent offices including USPTO, the European Union, Germany, Australia, and UK that conduct both substantive and formal examinations. In his applications for invention made by DABUS, he listed DABUS as the inventors. Thus far, his patent applications have been rejected by all offices worldwide that conduct substantive examination of patent applications.
With the advancement of technology, especially AI, it is expected that more inventions by AI systems will become the norm. Furthermore, the Fourth Industrial Revolution (4IR) can be best described as a fusion of technologies such as AI, genetic engineering, robotics, Internet of Things, 3D printing and quantum computing. Nicky Verd, the renowned author of Disrupt Yourself or be Disrupted (Johannesburg: Porcupine Press 2019) captures the essence of the 4IR in her book by stating that: ‘The Fourth Industrial Revolution is not about new Apps, or new technologies. It is about a new era, new ways of thinking and new ways of doing business.’
The current South African Patents Act, as it stands was not envisaged to deal with inventions made by AI systems. As technology rapidly advances in the 4IR, our Patents Act needs to be updated to meet the rigour of the 4IR. The floor is now open for discussions on whether to modify our Patents Act to accommodate inventions made by AI systems and bring the Act in line with advancing technology or resist AI being regarded as inventors and possibly stifle innovations. I vote for the former.
Ikechukwu Emmanuel Okeke BSc (cum laude) (UNISA) BSc Hons MSc (UP) LLB (cum laude) (UNISA) is a candidate legal practitioner at Natasha Mohunlal & Associates in Pretoria.
This article was first published in De Rebus in 2022 (Nov) DR 12.
