Page 13 - Issue 1 2023

LEGAL OPINION: CAN AI INVENT?

DABUS, the rise of the inventive

machines

By Christopher Mhangwane, associate, and David Cochrane, partner, Spoor & Fisher

he South African Companies and
Intellectual Property Commission
T(CIPC) made history in 2021 by
being the first patent office in the world
to grant a patent listing an artificial
intelligence (AI) rather than a person as
the inventor.
On 28 July 2021, the CIPC published
the acceptance of South African
patent no. 2021/03242 (“the SA
DABUS patent”) in the South African
Patent Journal. The publication of the
acceptance of the application for a
patent in the Patent Journal signifies
the grant of the patent by the CIPC. The Christopher Mhangwane David Cochrane
David Cochrane
patent lists “DABUS” as the inventor
and notes that “the invention was
autonomously generated by artificial opinion that this is not the appropriate vehicle to consider the questions of principle
intelligence”. DABUS is an acronym sought to be agitated by the applicant. Special leave to appeal is refused with costs.” It
for “Device for the Autonomous is now settled in Australia that an inventor must be a natural person.
Bootstrapping of Unified Sentience”. The The European Patent Office (EPO) held that an inventor within the meaning of the
developer of the AI, Dr Stephen L Thaler, European Patent Convention (EPC) had to be a natural person. The EPO Legal Board of
is the patentee. Appeal confirmed the decision, and the two patent applications, in which DABUS was
Dr Thaler filed corresponding patent designated as inventor on the application form, were refused.
applications in a number of jurisdictions, In the UK Court of Appeal, it was held that the inventor was not a person, and thus
including the United States of America drew attention to the fact that the application did not comply with the UK Patents
(USA), the European Patent Office, the Act, which provides that a patent for an invention may be granted primarily to the
United Kingdom (UK), Germany, New inventor or joint inventors, to the assignee or to the successor in title of the inventor(s)
Zealand, Taiwan, India, Korea, Israel and or assignee(s). Further, it was held that the statement that Dr Thaler acquired the
Australia. right to the patents by ‘ownership of the creativity machine DABUS’ did not indicate
The patent applications filed by Dr a derivation of the relevant right which is known in law. As a result, the appeal was
Thaler in all of those countries, with dismissed. The court also added that it must apply the law as it presently stands, and
the exception of South Africa, have so this was not an occasion to debate what the law ought to be. The UK Supreme Court
far been rejected, mainly on the finding has granted Dr Thaler permission to file a further appeal, which is to be heard on 27
that a natural person must be listed as February 2023.
an inventor on a patent application. At present, South Africa is the only country in the world in which a patent listing an
In Australia, the full Federal Court AI as an inventor has been granted. South African DABUS patent application was filed
held that an AI could not be considered as a national phase patent application in terms of the Patent Cooperation Treaty (PCT).
as an inventor for the purposes of the As a result, some believe, incorrectly in the writers’ views, that the CIPC was obliged
Australian Patents Act and Regulations. to accept DABUS as an inventor since inventorship was not objected to during the
On 11 November 2022, leave to appeal international phase of the PCT application.
was denied by the High Court. In the The South African Patents Act No. 57 of 1978 (the SA Patents Act) provides that “an
decision, it is stated: “the court is of the application for a patent in respect of an invention may be made by the inventor or by

EngineerIT | Issue 1 2023 | 13