Potential grounds for revocation of a patent citing AI as an inventor

09 Sep 2021

The South African patent office (“patent office”) recently made global news for becoming the first patent office in the world to have granted a patent for an invention that was created by artificial intelligence (“AI”). The patent (with ZA patent no. 2021/03242) was granted from a national phase application originating from international application number PCT/IB2019/057809 filed under the Patent Cooperation Treaty (PCT). The PCT is an international patent law treaty, which provides a unified procedure for filing patent applications to protect inventions in any one of its contracting states.

Some suggest that the grant of this patent was properly considered and was in line with the current intellectual property policy environment in South Africa. Others are of the opinion that, by basing the application for the patent on a PCT application, the applicant for the patent cleared the path to the grant of the patent, and in doing so circumvented any basis for interrogation of the identification of AI as inventor by the Registrar of Patents.

However, as the patent office does not substantively examine an application for a patent, the integrity of the patent will only be known if and when it is scrutinised in revocation proceedings as provided for by the South African Patents Act 57 of 1978, as amended (“Patents Act”). The intention of revocation proceedings is to have a patent cancelled as if it had never existed.

The patent may be susceptible for revocation on at least the following two grounds:

First potential ground for revocation

Section 61(1)(a) of the Patents Act states: “Any person may at any time apply in the prescribed manner for the revocation of a patent on any of the following grounds only, namely- (a) that the patentee is not a person entitled under section 27 to apply for the patent;…”

Section 27(1) of the Patents Act states: “An application for a patent in respect of an invention may be made by the inventor or by any other person acquiring from him the right to apply or by both such inventor and such other person.”

Under South African law there are only three ways in which the right to apply for a patent can be acquired from an inventor, namely:

• by a written assignment agreement between an applicant and the inventor;
• by an employment agreement, which requires an employee to assign his invention to his employer; or
• under common law principles when a) an employment agreement exists between the parties; and b) the invention falls within the course and scope of the employment of the employee.

In South Africa, only legal subjects (bearers of juristic competencies, subjective rights and legal duties) have the necessary legal capacity to enter into agreements. Legal subjects are divided into two main categories – natural persons and juristic persons. As the AI in question does not fall into the two main categories and is not capable of being a bearer of rights and duties, it is submitted that it is unable to assign any rights to another party. Therefore, the patent may likely be susceptible to attack on the basis of section 61(1)(a).

Second potential ground for revocation

Section 61(1)(g) of the Patents Act states that: “Any person may at any time apply in the prescribed manner for the revocation of a patent on any of the following grounds only, namely-… (g) that the prescribed declaration lodged in respect of the application for the patent … contains a false statement or representation which is material and which the patentee knew or ought reasonably to have known to be false at the time when the statement or representation was made;” In this regard, the prescribed declaration states: “…the inventor(s) of the abovementioned invention is/are the person(s) named above and the applicant(s) has/have acquired the right to apply by virtue of …”

As the language in the prescribed declaration compels an applicant to name a person as an inventor, the patent could potentially also be attacked on this ground.

Four major foreign jurisdictions in which the patentee has filed either a corresponding patent application or another patent application citing AI as an inventor include the United Kingdom, Europe, Australia and the USA. The outcomes of these applications were varied and are briefly discussed below.

United Kingdom

During the prosecution of the corresponding UK application, the UK Intellectual Property Office (“UKIPO”) determined that AI could not be the inventor. The UKIPO’s decision was appealed, but the UK High Court was also of the view that AI cannot be an inventor as it is not a person and is incapable of conveying property.

Europe

Two corresponding applications were filed at the European Patent Office (“EPO”). The EPO refused to grant a patent in respect of either of the applications. In the most recent communication available on the EPO register, the Board of Appeal stated: “… under the EPC the inventor designated for the purpose of a patent application must be a person having legal capacity.”

Australia

During the prosecution of the corresponding application in Australia, the Federal Court has overturned a decision of the Delegate of the Commissioner of Patents to reject the Patent Application. The Federal Court accepted that AI can be an inventor. At the time of writing, no appeal by the Australian Patent Office against the Federal Court’s decision has been reported.

USA

The patentee of the patent also filed an application (however, not a corresponding application) citing AI as an inventor at the US Patent and Trademark office (“USPTO”). The USPTO refused to grant a patent and the prosecution ended with a petition to the Commissioner for Patents. In the decision on petition, it is stated that: “interpreting “inventor” broadly to encompass machines would contradict the plain reading of the patent statutes that refer to persons and individuals”.

Effect of decisions in foreign jurisdictions on South African law

Our courts have in the past considered UK court decisions in circumstances where local precedents were not available and where the language of the Patents Act aligned with the UK Patents Act. In this case, the language of the relevant part of the South African Patents Act is more in line with the language of the UK Patents Act than with Australia’s Patents Act, hence our courts would likely add more weight to the decision of the UK High Court than to the decision of the Federal Court of Australia.

Proponents for AI inventorship argue that at least one reason for recognising AI as an inventor, is that it may incentivise innovation and investment in AI. Such investment may in turn, benefit society at large, which makes this a compelling argument.

However, until such time as the Patents Act is amended, to specifically allow AI to be cited as an inventor, the uncharted legal waters in respect of AI inventorship in South Africa seem to be quite rough.

See also:

• Artificial intelligence created inventions – Patentable or not?
• The machines are here – 3D Printing: A genuine challenge to Intellectual Property laws and rights holders?
• Patentability of a programme for a computer and computer-implemented inventions: A South African perspective
• Science, Technology & Innovation and Intellectual Property: Leveraging openness for sustainable development in Africa

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)