Page 14 - Issue 1 2023

LEGAL OPINION: CAN AI INVENT?

any person acquiring from him the right the registrar, of the right of the applicant to apply” must be filed with the CIPC. No
to apply or by both such inventor and declaration or proof of right to apply for the DABUS patent was lodged by Dr Thaler
such other person”. The SA Patents Act during the PCT phase of the application in terms of PCT Rule 4.17(ii), or at the CIPC. The
also provides that “any person other Power of Attorney form P3 lodged in support of the DABUS patent in South Africa makes
than the inventor making or joining in no mention as to how the invention was transferred to the applicant. The wording “and
an application for a patent shall, in the the applicant(s) has/have acquired the right to apply by virtue of an assignment from
prescribed manner, furnish such proof the inventor(s)” has been deleted from the Form P3. The Power of Attorney Form P3
of his title or authority to apply for a therefore does not provide any declaration or proof of Thaler’s right to apply for the
patent as may be prescribed”. patent. As no proof of right to apply was provided, the writers, therefore, are of the view
The SA Patents Act does not contain that the DABUS patent should not have been accepted by the CIPC.
a definition for an “inventor”. The SA
Patents Act however, when referring to In summary, the DABUS patent in South Africa, in the writers’ views, is deficient and
the inventor, refers expressly to “him” should have been rejected by the CIPC, since:
and “person”. It is therefore clear from 1. The phrase relating to the acquisition of the rights to the invention by the applicant,
the SA Patents Act that an inventor in this case, Dr Thaler, was struck from the form P3. The form P3 therefore gives
must be a person, which an AI is not. no indication or declaration as to how Dr Thaler obtained the right to apply for the
This is in line with the decisions of the patent;
Australian Full Federal Court, the UK 2. No declaration of the applicant’s entitlement to apply for a granted patent was filed
Court of appeal, and the Legal Board of in terms of PCT Rule 4.17(ii); and
Appeal of the EPO, that in terms of the 3. No proof of the assignment of the rights in and to the invention, as is required in
law as it stands, it is not envisaged that terms of the Patents Act, has been lodged at the CIPC, indicating how Dr Thaler
an inventor can be anything else other acquired the right to apply for the patent.
than a natural person, and AI cannot be
an inventor. Furthermore, in view of the wording of the South African Patents Act, and the decisions
The EPO Legal Board of Appeal of the courts in Australia, the UK, and the EPO Legal Board of Appeal, an AI such as
stated that it is not aware of any case DABUS cannot be an inventor.
law which would prevent the user South African DABUS patent no. 2021/03242 has been touted as the first patent
or owner of a device involved in an granted for an invention created by an AI, but it stands alone, with patent offices and
inventive activity to designate himself courts around the world rejecting corresponding patent applications. In the writers’
as the inventor. This is not of assistance views, the DABUS patent should have been rejected by the CIPC in South Africa. This
with the SA DABUS patent, because is not to say that the writers reject the notion that an AI could be an inventor, or that
DABUS, and not Dr Thaler, is listed inventions created by AI should not be capable of patent protection. On the contrary, Dr
as the inventor. Even if Dr Thaler was Thaler has drawn attention to this interesting question. The current patent laws do not
listed as the inventor of the South however make provision for AI being recognised as an inventor, and for this to happen
African DABUS patent, this may not there will need to be a change in the patent laws. The rise of the inventive machines
have been of assistance to the South is inevitable, and it remains to be seen whether the lawmakers will recognise AI in the
African DABUS patent. In the UK Appeal same way that the laws currently recognise human ingenuity.
Court, Arnold LJ stated that there is
no rule of law that a new intangible
produced by existing tangible property
is the property of the owner of the
existing tangible property.
The CIPC does not conduct
substantive examination of a patent
application (for example for novelty
and inventive step), but in terms of the
SA Patents Act and Regulations, the
CIPC must still make sure that formal
requirements are complied with. One of
the formal requirements is that “where
the applicant has acquired a right to
apply from the inventor, an assignment
or other proof, to the satisfaction of

EngineerIT | Issue 1 2023 | 14