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“We are both created and create. Why cannot our own creations also create?”
What a week
First we heard that a South African patent for an invention that lists artificial intelligence (“AI”) as its inventor had been issued, a world first. Then we heard that an Australian court had handed down a judgment allowing AI to be listed as the inventor of a corresponding patent in Australia.
The Australian judgment, Stephen Thaler and Commissioner of Patents, delivered by Judge Beach, is technical yet very readable.
The applicant and the inventor
The applicant for the patent is Dr Stephen Thaler. The inventor, however, is listed as an AI system described as “a device for the autonomous bootstrapping of unified sentience (DABUS).” Dr Thaler owns the copyright in the source code for DABUS and the computer on which DABUS operates.
The legal question
Can an “inventor” be an AI system in terms of the Australian patent legislation, the Patents Act 1990?
AI for beginners
The judge felt that he should explain AI: “AI systems may incorporate, or be constituted by, artificial neural networks… artificial neural networks are a subfield of machine learning… artificial neural networks are based on mathematical modelling designed to mimic natural neural networks.”
DABUS
The judge said that “DABUS is a form of neurocomputing that allows a machine to generate new concepts which are encoded as chained associative memories with the artificial neural networks.”
He went on to say that DABUS “generates novel patterns of information rather than simply associating patterns…it is capable of adapting to new scenarios without additional human input… it is not just a human generated software program that then generates a spectrum of possible solutions to a problem with a filtering algorithm to optimise the outcome… [it] in one sense can be said to mimic aspects of human brain functions.”
Owners and inventors
The judge made the point that ownership of a patent is limited to the inventor or the person who derives title from the inventor. But the term “inventor” is not defined in the legislation. There is nothing in the legislation that excludes an inventor from being a non-human AI device or system. There’s nothing in the Patent Co-operation Treaty either.
AI can be an inventor
The judge felt that the Deputy Commissioner of Patents had been wrong to fixate on the dictionary meanings of the word “inventor”, which stress that an inventor is a human.
The judge said that the word “inventor” is an “agent noun”, where the suffix “or” or “er” “indicates that the noun describes the agent that does the act referred to by the verb to which the suffix is attached.” Examples include computer controller, regulator and dishwasher.
The judge went on to say this: “The agent can be a person or thing that invents. Accordingly if an AI system is the agent which invents, it can be described as an ‘inventor’.”
Patent law needs to evolve
The judge suggested that “a widening conception of ‘manner of manufacture’ is a necessary feature of the development of patent law in the 20th and 21st centuries as scientific discoveries inspire new technologies … I see no reason why the concept of ‘inventor’ should not also be seen in an analogously flexible and evolutionary way.”
He went on to say this: “In my view it is consistent with the object of the Act to construe the term ‘inventor’ in a manner that promotes technological innovation… by rewarding it, irrespective of whether the innovation is made by a human or not.”
Recognising the reality
According to the judge, “machines have been autonomously or semi-autonomously generating patentable results for some time now. So… you are simply recognising the reality by according artificial intelligence the label of ‘inventor’.”
Public interest
The judge said that, “recognising computer inventions and patents on computational inventions could promote disclosure and commercialisation… without the ability to obtain patent protection, owners of creative computers might choose to protect patentable inventions as trade secrets without any public disclosure.”
The inventor isn’t actually very relevant
The judge made the point that the law is only really concerned with the inventive step: “The focus of the Act is not really on the inventor at all.”
The applicant is relevant though
The judge said that the applicant, Dr Thaler, “as the owner and controller of DABUS would own any inventions made by DABUS when they came into his possession.” He went on to say that, “Dr Thaler is a person who derives title from the inventor DABUS by reason of his possession of DABUS, his ownership of the copyright in DABUS’s source code, and his ownership and possession of the computer on which it resides.”
AI can invent but it can’t own
The judge concluded by saying that “an inventor as recognised under the Act can be an artificial intelligence system or service. But such a non-human inventor can neither be an applicant for a patent nor a grantee of a patent.”
There will be more to come
This is fascinating stuff. But we don’t think we’ve heard the final word.
In South Africa, it should be noted that the DABUS patent application was not subjected to substantive examination by the South African Patent Office and we doubt that the Patent Office critically considered the issue of whether a non-human can be named as the inventor before granting the South African patent.
Ultimately, there will be some uncertainty in South Africa until a court is called upon to make a judicial determination. As in Australia, neither the South Africa Patents Act nor the Patent Regulations stipulate that an inventor must be a human.
However, in terms of South African law, ownership of a patent cannot be “derived” from the inventor as under Australian law. Instead, only the inventor or a person “acquiring” the right from the inventor may apply for a patent. In our view, this requirement may well make it more difficult to convince a South African court that a valid patent can be obtained for an invention created by an AI system. What is abundantly clear is that patent laws need to evolve to stay relevant and meet the objective of rewarding innovation.
Reviewed by Rowan Forster, an Executive in ENSafrica’s IP department.
Hugo Biermann
IP Patent Attorney Senior Associate
[email protected]
+27 81 482 3447
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