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LEGAL OPINION: PATENTS FOR AI GENERATED INVENTIONS

In terms of the South African Patents Act 57 of 1978, as amended (“Patents Act”)
and the regulations issued thereunder (“Patent Regulations”), one of the formality
requirements that an application for a patent in South Africa must comply with is to
identify the inventor(s) of the invention for which patent protection is sought.
The requirement to identify the inventor(s) of an invention exists because the
right to pursue patent protection for an invention originates from the inventor. It is
the inventor who, first and foremost, has the right to file a patent application for his/
her invention.
While neither the Patents Act nor the patent regulations stipulate that an inventor
necessarily must be a natural person, we believe that this is implicit since the right
to pursue patent protection is a legal right that attaches to the inventor as a legal
subject. In South Africa, only natural and juristic persons are recognised as legal
subjects. AI falls in neither of these categories.
The right to apply for patent protection is an assignable right which, if assigned,
Pieter Visagie
would allow the assignee to apply for patent protection, instead of the inventor. In
cases in which the inventor identified in a patent application is not the one applying
for patent protection (i.e. is not the applicant), another formality requirement that The registrar’s examination of South
must be complied with is that proof of the applicant’s entitlement to apply for patent African patent applications is not in all
protection must be provided (e.g. in the form of an assignment agreement). circumstances governed only by the
The above formality requirements therefore embody two difficulties that the Patents Act and the patent regulations,
applicant for the patent needs to overcome in South Africa, since the identification of however, particularly when a South
AI as an inventor would, we believe, not only be substantively deficient, but may also African patent application is based on an
be viewed as formally deficient, as would any proof of the applicant’s entitlement that earlier patent application filed in terms of
the applicant may have been able to provide. the Patent Cooperation Treaty (“PCT”).
It appears that an interrogation of both these issues by the South African In terms of Section 43F(2) of the
Registrar of Patents (“Registrar”) was circumvented on legally technical grounds. Patents Act, when processing an
The Patents Act places an obligation on the registrar to examine all patent application for a patent that originates
applications for compliance with the formality requirements prescribed by the Patents from an earlier patent application filed in
Act, which include those referenced above, before the registrar may allow a patent terms of the PCT (“PCT application”), the
application to proceed to grant. regulations made under the PCT (“PCT
Currently, examination as to compliance with formality requirements is the full Regulations”) and the administrative
extent to which the registrar examines patent applications. There is currently no instructions issued under the PCT
examination as to compliance with substantive requirements, e.g. patentability, Regulations shall prevail in the event of
although this is in the pipeline. any conflict with the Patents Act.
The patent is based on an earlier
patent application under the Patent
Cooperation Treaty (“PCT”), number
PCT/IB2019/057809. Therefore, its
examination by the registrar would have
been dictated by the PCT Regulations.
Under Rule 51bis.2 of the PCT
Regulations, the registrar is prohibited
from requesting any document or
evidence relating to the identity of an
inventor identified in a South African
patent application, if such a patent
application is based on an earlier PCT
application that includes a declaration
of inventorship under Rule 4.17(i)
of the PCT Regulations, unless the
registrar reasonably doubts the
veracity of the identification.

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