Page 29 - EngineerIt August 2021

LEGAL OPINION: PATENTS FOR AI GENERATED INVENTIONS

In the present case, the earlier PCT application on which the patent is based did
include a declaration of inventorship under Rule 4.17(i). Thus, the ability of the registrar
to interrogate the identity of the inventor was curtailed.
In addition, and more significant perhaps, are the contents of an April 2009
practice directive (“Practice Directive”) by the registrar, that the registrar shall not call
for proof of the applicant’s entitlement in filing a South African patent application, in
cases in which the patent application is based on an earlier PCT application in which
the identity of the applicant is the same as the identity of the applicant of an earlier
priority application on which the PCT application is based.
In the present case, the identity of the applicant in the earlier PCT application on
which the patent is based and the identity of applicants in the earlier priority applications
on which the PCT application is based, are indeed the same. Thus, in the usual
requirement for proof of the applicant’s entitlement, the registrar was circumvented on
the basis of the practice directive.
Thus, by basing the application for the patent on a PCT application, the applicant
for the patent cleared the path to the granting of the patent, having circumvented any
basis for interrogation of the identification of AI as inventor by the registrar.
We therefore conclude that the grant of the patent has, unfortunately, made no
substantive contribution to the debate on the question of AI inventorship in the context
of patent protection, and the patent is likely to be vulnerable to attack on several
grounds. At best, the granting of the patent has provided a roadmap to applicants
for patents for AI-created inventions on how to circumvent interrogation of the issue
during formality examination in South Africa. Unfortunately, this does not provide such
applicants with any certainty regarding the validity and enforceability of any patent
granted under these circumstances.
Any excitement generated around the granting of the patent should therefore be
moderated by the obvious and foreseeable difficulty that the patentee would ultimately
have to be able to prove that it had acquired the right to apply from the AI, a machine.
In our view, the debate of AI inventorship in the context of patent protection is

therefore one that should continue, and should be re-focused on the more substantive THE MOST
legal questions, which we believe would most prominently include a wider debate INTERCONNECTED

addressing the legal identity of AI. A valuable and substantive contribution to this debate
may well come from the abovementioned decision by the Australian Federal Court, and DATA CENTRE
from similar cases that are pending before other courts. IN AFRICA.
While outside the scope of this statement, we nevertheless note for interest that we
understand that the Australian Federal Court, in the abovementioned case, held the
view that the entitlement provisions of Australian patent laws, prescribing who is entitled
to seek patent protection, can be interpreted sufficiently broadly to include an owner
of AI in the case of an AI-created invention, without any proof of entitlement being
required, at least on the basis of the ownership of the AI and its source code. In this
regard it is worth noting that the relevant provisions include broad language, including
that the title of the invention may be “derived” from the inventor.
The same conclusion would not necessarily follow in South Africa, since the
Patents Act does not include provisions mirroring the relevant provisions of the
Australian patent laws.
In South Africa, the entitlement provisions in the Patents Act provide that an
application for a patent in respect of an invention may only be made by the inventor or
by any other person acquiring from the inventor the right to apply which, as indicated
above, is associated with a corresponding requirement to supply proof of entitlement to
apply. How widely our courts would be willing to interpret this provision remains to be
seen, but it can be said that it is textually narrower than the corresponding Australian
provisions. n www.teraco.co.za

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