Dabus: should AI systems be considered as ‘inventors’?

The link between artificial intelligence (AI) and intellectual property has been in the spotlight in recent months after US-based physicist Stephen Thaler submitted patent applications, including in SA, for an invention relating to packaging and generated by an AI which Thaler called Device for Autonomous Bootstrapping of Unified Sentience (Dabus).

What makes these patent applications different is Dabus is listed as the inventor, given that the invention was, according to Thaler, autonomously generated by the AI.

Although some of the patent applications have been rejected in other jurisdictions around the world, earlier this year the Companies and Intellectual Property Commission of SA became the first in the world to grant the patent application. In doing so Dabus became the first ever AI, globally, to be cited as an inventor in a granted patent.

The reason the patent was approved in SA, explains Kelly Thompson, chair of Adams & Adams, has been held by many to be that patent applications in SA are not subject to a substantive patent-examination procedure as they are in jurisdictions such as the UK, the European Union or US. Instead, the Companies and Intellectual Property Commission of South Africa, represented by the

registrar of patents, registers patents provided they meet the formal and procedural requirements set out in the statute.

The requirement to identify the inventor of an invention for which patent protection is sought is not a substantive matter, however. Instead, it forms part of the formal requirements, says Thompson.

“In the normal course the registrar would still need to consider whether the identification of an inventor in a patent application meets the formal requirements and, in addition, would need to be provided with proof the inventor transferred their right to seek patent protection to the applicant.”

Whether the identification of an AI as an inventor in a patent application meets the formal requirements and whether any rights to pursue patent protection could be acquired from an AI is the subject of much debate.

Given that the registrar was curtailed by the provisions of international treaties and local practice directives which applied to the patent application, the granting of the patent does not add much substance to the debate on AI inventorship, says Thompson, adding that although the patent has been granted, there is an argument that the identification of AI as an inventor may provide a basis for an attack on the validity of the patent.

The European Patent Office rejected the same application based on the fact that an inventor of a patent application must have “legal capacity”. In the US and the UK the application was also rejected for similar reasons. These rejections are being appealed.

Interestingly, the UK government has said it is consulting on a range of possible policy options, “including legislative change, for protecting AI generated inventions which would otherwise not meet inventorship criteria”.