Thapelo Montong | Senior Associate | Patent Attorney | Adams & Adams | mail me |
The impact of digitisation on small and medium enterprises is significant. Savvy SMEs can turn this to a huge advantage as they can do things quickly and in a more agile manner than big businesses. However, challenges abound when trying to protect innovative products and processes.
The work environment has seldom seemed more fluid than it does currently, in large part because of the introduction of enabling technology across business.
Technology is no longer constrained as the domain of IT departments – new technology such as artificial intelligence (AI), machine learning, big data, and robotics promise a rapidly changing work environment. It’s no longer business as usual, and clinging to the traditional methods of work will quickly see firms left behind.
Legal issues regarding patent applications
Advances in artificial intelligence and machine learning also throw up some complex legal issues regarding patent applications.
Adams & Adams offers services to SMEs with the goal of protecting intellectual property including trademarks and patents. However, when it comes to obtaining patents for inventions that were substantially developed by an AI machine, South African patent law is not particularly helpful.
Currently, patent laws state that an invention must have an inventor, and the inventor must be cited in the patent application. Historically, this has always been straightforward – an inventor is the natural person or people who conceived or contributed to the invention.
However, complications arise when a natural person uses a smart tool – such as a computer running a sophisticated AI or machine learning programme – to create an invention, or simply programmes the computer and the AI programme is actually responsible for the invention.
Let’s speak hypothetically – or not so hypothetically, as the case may be. A computer programmer or coder configures a computer to apply machine learning algorithms to a researcher’s cancer diagnostic data.
The computer detects trends and correlations, and proposes a new cancer treatment. Who is the inventor of this treatment? Is it the computer programmer, the computer or the researcher? Where to now?
Although the patent statutes of most patent jurisdictions do not specifically define ‘inventor’, a recent decision by the European Patent Office (EPO) rejected two patent applications on the basis that an AI system named DABUS was identified as the inventor of the inventions that were subject to these applications.
The EPO indicated that an AI programme cannot own an invention, cannot transfer rights to an invention, does not meet the legal qualifying criteria for a natural person, hence the ruling that rejected these applications.
Regrettably, laws adapt very slowly, and at almost glacial pace when compared to the pace of AI development.
A computer, not a human, may well meet the requirements for inventorship, but the law does not currently recognise this option.
South African patent law and practice
In South Africa, although ‘inventor’ isn’t specifically defined in the Patents Act, nothing in South African law recognises legal rights as attaching to anything other than a natural and legal person, neither has anything in South African law thus far recognised AI as either of these.
This presents a rather difficult position in the context of South African patent law and practice. Naming a natural person who is not actually the true inventor may render the granted South African patent susceptible to an attack on material misrepresentation.
On the other hand, naming an AI machine as the true inventor may result in the patent being attacked for lack of entitlement, given that we understand that AI, as an inanimate object, does not have a legal personality and therefore, in the eyes of the law, cannot own an invention or transfer rights to an invention.
The questions remain:
- Whether, taking into account the potentially serious ramifications of incorrectly naming inventors in a patent application, naming AI as an inventor would be accepted by patent offices?
- Would patent offices be willing to adopt a purposive interpretation of their existing patent laws to the effect that patent inventorship may extend beyond natural persons in cases where it is the applicant’s assertion that the invention was created, not by a natural person, but by AI?
In conclusion
The conclusion is that, for now, SMEs working on AI-related inventions must cite the human creators of the AI machine as inventors on patent applications, until there is certainty in the law.
These are complex issues, and advice from an experienced firm such as Adams & Adams can help guide SMEs through the difficult and challenging process of applying for a patent where the law has not yet caught up with technology.
