Substantive and formal challenges to AI in patent law

(a) United States Patent and Trademark Office decisions

On 29 July 2019, US Patent Application No. 16/524,350 entitled ‘Devices and Methods for
Attracting Enhanced Attention’ was filed at the United States Patent and Trademark Office
(USPTO), which named only a single inventor with the name ‘[DABUS]’ and the family
name ‘(Invention generated by artificial intelligence)’. This patent application named Stephen
L Thaler as the applicant, the assignee, and the legal representative of DABUS. The USPTO1
stated that 35 U.S.C explicitly and consistently refers to inventors as being ‘natural persons’.2
The main argument advanced by the USPTO was that to satisfy the inventiveness
requirement, patent law requires the mental act of ‘conception’ which is something AI is
unable to perform as this mental requirement falls solely within the realm of natural persons.

Whilst originally the ideas of Intellectual Property may point to property being the
product of intellectual labour, intellect, intelligence or consciousness may no longer be
exclusively a human trait or requires human involvement.

Since the decision in October 2020, the USPTO has published the ‘Public Views on
Artificial Intelligence and Intellectual Property Policy’,3 in which industry experts from all
fields, as well as the general public were invited to comment in 2019 on issues surrounding
the challenges that increasingly developed AI poses to patent law, and in particular the issue
of AI inventorship and ownership of patents. 4 Interestingly enough, a majority of the
comments stated that AI is capable of equalling and surpassing human intelligence in the near

1
United States Patent and Trademark Office Decision on Petition In re Application of Application No.:
16/524,350 27 April 2020 4.
2
For example, 35 U.S.C. § 101 uses phrases such as ‘whoever invents…’ which infers that a natural person is
intended to be the subject. As pointed out by the USPTO, to interpret the term ‘inventor’ as including non-
human machines ‘would contradict and was precluded by the plain readings of the patent statutes’, as
exemplified by 35 U.S.C. Furthermore, 35 U.S.C § 115 uses terms such as, ‘person’, ‘individual’, ‘himself’, and
‘herself’. The USPTO ultimately decided that the plain language reading of the statutes and complementary case
law was instructive and that AI machines cannot be an inventor for the purposes of the law. In supporting its
decision, the USPTO referred to decisions in various US courts (that concerned state and corporate
inventorship), which held that a key element of inventiveness is the mental act of conceptualising an invention
in the mind – something which only a natural person is capable of.
United States Patent and Trademark Office Decision on Petition In re Application of Application No.:
16/524,350 27 April 2020 4.
3
United States Patent and Trademark Office ‘Public views on artificial intelligence and intellectual property
policy’ (2020) USPTO.
4
A conference was held prior to this engagement, which can be accessed at: United States Patent and
Trademark Office ‘Artificial intelligence: Intellectual property considerations’ USPTO 7 October 2019,
available at https://www.uspto.gov/about-us/events/artificial-intelligence-intellectual-property-policy-
considerations, accessed on 2 October 2020.
future.5 However, as this has not yet eventuated, humans are still integral to the innovation
process of AI.

(b) European Patent Office and UK Intellectual Property Office

On 24 July 2019,6 an application was filed which listed Stephen Thaler as the applicant and
DABUS as the inventor for patents EP18275163 and EP18275174, with Thaler having a right
to successor in title to the prospective patent. 7 The applicant contended to the European
Patent Office (EPO) that the invention contained in the patent was the result of DABUS
identifying the novelty of the invention before a natural person did and that granting
inventorship to DABUS would consequentially fulfil the aims of patent law, namely
disclosure, facilitation of innovation, and incentivisation. Importantly, the applicant argued
that DABUS was the actual devisor (the UK equivalent to the idea of conception in the US)
of the invention and that it was is trite to list the actual devisor of the invention for the
purposes of law. Furthermore, failure to list the actual inventor, is a criminal offence in some
jurisdictions in which patents were sought.8

On 27 January 2020, the EPO released the full rationale for the refusal for patents
EP18275163 and EP18275174.9 The EPO stated that the applications which listed DABUS as
the sole inventor did not meet the provisions in Article 81 and Rule 19 of the EPC which
required that the inventor be a natural person – which a machine was not. 10 The EPO also
indicated that the name of a machine, DABUS, does not satisfy rule 19(1) of the EPC as
names given to objects do not serve the same function as names given to persons in that they
neither identify them nor enable them to exercise rights that stem from their personality.11

The EPO noted that the granting of the inventorship title did in fact confer
complementary rights on the inventor.12 This was problematic as AI systems do not have
5
United States Patent and Trademark Office ‘Public views on artificial intelligence and intellectual property
policy’ (2020) USPTO i-ii.
6
EPO decision of 27 January 2020 on EP 18 275 163 para 1; EPO decision of 27 January 2020 on EP 18 275
174 para 1.
7
EPO decision of 27 January 2020 on EP 18 275 163 para 4; EPO decision of 27 January 2020 on EP 18 275
174 para 4.
8
EPO decision of 27 January 2020 on EP 18 275 163 para 12; EPO decision of 27 January 2020 on EP 18 275
174 para 13.
9
EPO decision of 27 January 2020 on EP 18 275 163; EPO decision of 27 January 2020 on EP 18 275 174.
10
EPO decision of 27 January 2020 on EP 18 275 163 para 8; EPO decision of 27 January 2020 on EP 18 275
174 para 9.
11
EPO decision of 27 January 2020 on EP 18 275 163 para 22; EPO decision of 27 January 2020 on EP 18 275
174 para 23.
12
These include the inventor’s right, vis-à-vis the applicant for or proprietor of a European patent, to be
mentioned as such before the EPO (Article 62 of the EPC); the right to be designated in the European patent
application (Article 81 of the EPC); the right to be notified of the designation (Rule 19(3) of the EPC); the right
legal status. The EPO further held that non-natural juristic persons are afforded legal
personality on the basis of legal fiction. Legal fictions are created directly by legislation or
developed through jurisprudence. Whilst natural persons are afforded legal status as a result
of being natural persons, in the case of AI there is no legal status currently as there is no right
created by legislation or jurisprudence. As a result, AI machines cannot acquire the status of
inventor, nor the rights associated with inventorship.13

Both decisions turned on the formal elements of patent law – being the natural person requirement
for inventorship rights. However, there are many challenges associated with the substantive
elements of the current laws – such as whether sufficiently advanced AI systems would render all
innovations obvious and hence unpatentable. Many disagree with these decisions stating one of the
main proponents of inventorship rights for AI argues that that granting patent rights to AI-
generated inventions will spur innovation14– and allow development15 beyond human
capabilities.16 He says that by allowing AI to be a patent holder, we recognise the creativity of
these systems,17 and encourages investment/incentives18 for developing and commercialising
autonomous inventing technologies, or ‘creative computers’. However, others have hit back
stating that an AI system would have no interest in a patent, nor would they be able to apply
for one or utilise it. They contend that AI should remain a tool for a natural person, in the
innovation process.

South African legislation and policy

Policy

to be mentioned as inventor in the published European patent application and the European patent specification
(Rule 20(1) of the EPC); and, in the event of a dispute with the applicant or proprietor of the patent, the right to
be mentioned even against the wishes of the applicant or proprietor if a national court has issued a final decision
whereby the applicant or proprietor is required to designate him as inventor (Rule 20(2) of the EPC). The
inventor’s legal position is further protected by Article 60(1) of the EPC which vests with the inventor the initial
right to the European patent and foresees that the inventor can transfer this right to a successor in title. EPO
decision of 27 January 2020 on EP 18 275 163 para 26; EPO decision of 27 January 2020 on EP 18 275 174
para 27.
13
EPO decision of 27 January 2020 on EP 18 275 163 para 27; EPO decision of 27 January 2020 on EP 18 275
174 para 28.
14
Ryan B Abbott ‘Patenting the output of autonomously inventive machines’ (2017) 10(1) Landslide
https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2017-18/september-
october/patenting-output-autonomously-inventive-machines/; Ryan Abbott ‘Hal the inventor: Big data and its
use by artificial intelligence’ reference 2.
15
Francesco Banterle ‘Ownership of inventions created by artificial intelligence’ reference 21-22.
16
Wariya Lamlert ‘Problems of patentibility and inventorship for inventions created by artificial intelligence’
(2020) 6(1) International Journal of Knowledge Engineering 14.
17
Russ Pearlman ‘Recognizing artificial intelligence (AI) as authors and inventors under US intellectual
property law’ (2018) 24(2) JL & Tech 29.
18
Erica Fraser ‘Computers an inventors – Legal and policy implications of artificial intelligence on patent law’
(2016) 13(3) SCRIPTed 331.
The White Paper on Science and Technology19 underpinned the National System of
Innovation (NSI) – which supports the transformation of South Africa from a resource-based
to a knowledge-based (and digitalised) economy, which is essential if South Africa aims to
become competitive globally. Thus, the DST developed the ‘Ten Year Innovation Plan’, for
2008 to 2018, predominantly based on the NSI. South Africa has yet to fully capitalise from
the potential of Science, Technology, and Innovation Although there has been growth, South
Africa’s innovation performance20 (measured in patents and products) has remained
stagnant.21
One of the key aims of South African policy as noted in the White Paper is that is creating an
enabling environment that supports and embraces the 4th industrial revolution and big data. It
is in the interests of South Africa, if these aims are to be met, to start by fostering a legal
environment that embraces, encourages and protects innovation. Inclusive innovation has
long been linked to thriving economies and improving the quality of life at all levels. 22

The Patent Act 1978

IV SOUTH AFRICA

(a) Formal examination poses a challenge to AI inventorship

Before evaluating the patentability of inventions under s25 of the South African Patent Act
57 of 1978, the question is under South African law, do AI systems qualify for inventorship?

(1) Inventorship definition

(i) South African Patents Act 57 of 1978 (Patent Act)

In South African patent law, a ‘person’ for the purposes of an ‘applicant’ or ‘patentee’
includes, in section 2 of the Patent Act 57 of 1978 (Patent Act), natural persons and juristic
persons, such

19
Department of Arts, Culture, Science and Technology White Paper on Science & Technology (1996).
20
Patents reflect the level of technological accomplishments and allow international comparisons. In order to
be a key innovator in certain areas, South Africa has committed to producing a certain number of patents per
year. However, the 2019 Science, Technology and Innovation Indicators report from the DST found that the
production and application of South African patents had declined. There were only 38 patent applications per
million inhabitants in 2017, compared to 42 in 2008.
21
Department of Science & Technology White Paper on Science, Technology and Innovation (2019) x.
22
Department of Science & Technology White Paper on Science, Technology and Innovation (2019) 2.
The current Patent Act does not define ‘inventor’. However, the previous Patent Act 37 of
1952 defined inventor in section 1 as including ‘the legal representative of a deceased
inventor or of an inventor who is a person under disability, but does not include a
communicatee’.23 Burrell suggests that this old definition should apply to the current Patent
Act. Importantly, even if this definition of ‘inventor’ is adopted, it is broad and would not
preclude non-natural persons or AI from being an inventor. The Patent Act as a whole poses
challenges to AI inventorship such as in section 10(1)(a) of the Patent Act, which requires the
names and addresses of inventors, applicants, and patentees to kept on record with Patent
Offices. The ‘first and true inventor’ test which relies on the mental act of conception, also
poses challenges to AI inventorship.

23
Section 1 of the Patent Act 37 of 1952.