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05 August 2021

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On July 28, the Companies and Intellectual Property Commissionof South Africa granted the world's first patent on aninvention created by an artificial intelligence (AI)inventor. This development marks an important milestone inwhat will certainly be a significant battle for legal recognitionof such inventions in the United States and other countries.

Device for Autonomous Bootstrapping of UnifiedSentience aka DABUS is an AI developed byMissouri physicist Stephen Thaler. The recently-issued patentis directed to a food container based on fractal geometry.The patent application was filed on September 17, 2019 under thePatent Cooperation Treaty. 1 Under the heading ofinventor, the application identifies DABUS and statesThe invention was autonomously generated by an artificialintelligence." 2

It is important to note that patent applications in South Africaare not subject to a formalized patent-examination procedure of thekind found in the U.S., Canada, Europe, and many otherjurisdictions. Indeed, this aspect of the South Africanpatent system appears to have been a motivating factor for Thalerto seek patent protection in the country. Thus, it should notbe surprising that this patent was granted and the ultimate legalsignificance of this grant may be yet to be seen. With thatsaid, Thaler and his legal team have attempted so far invain to have AI-invented technologies recognized in othercountries including the United States.

In Europe, the Board of Appeal (BOA) of theEuropean Patent Office (EPO) handed down a pair ofpreliminary communications stating that an inventor on a patentapplication must have legal capacity. TheBOA's communications were responsive to appeals of theEPO's rejection of the DABUS patent applications. Anoral hearing before the BOA is scheduled for December 2021.

In the United States, Thaler filed U.S. Patent Application Nos.16/524,350 and 16/524,532 on July 29, 2019. 3Along with the patent applications, an Application Data Sheet(ADS) was filed in each case identifying a singleinventor with the given name DABUS and a family nameInvention generated by artificial intelligence.4 The ADSs also identify Stephen Thaler as theApplicant and Assignee. In both cases, the United StatesPatent and Trademark Office (USPTO) responded byissuing a Notice to File Missing Parts of Nonprovisional PatentApplication (the Notice) and asserted that the ADSdid not identify each inventor by his legal name.5 A subsequent petition to request supervisory review ofthe Notice and vacate the Notice was then filed by Thaler anddismissed by the USPTO. 6 Thaler then appealed tothe U.S. District Court for the EasternDistrict of Virginiaseeking, among other things, a reversal of the USPTO'sdecision on the petition.

In his complaint to the district court, Thaler argues that nonatural person meets the criteria for inventorship under thecurrent statutory and regulatory scheme. 7 Thus, if nocorrective action is taken, Thaler asserts that future AI-generatedpatents would enter the public domain once disclosed.8 Additionally, Thaler argues that allowingpatents on AI-generated inventions would be consistent with theConstitution and the Patent Act, will incentivize the furtherdevelopment of inventive machines, and that failure to do so allowsindividuals to take credit for work that they have not done.9 Finally, Thaler argues that the notion ofconception does not necessarily exclude artificialinventors. 10 Thaler seeks an order compelling the USPTOto reinstate the DABUS U.S. patent applications, a declaration thata patent application should not be rejected on the grounds that nonatural person is identified as an inventor, and a declaration thata patent application should properly identify an AI in cases wherethe AI has met the inventorship criteria. 11

Oral arguments were heard in the spring of 2021 and, so far, noorder has been issued. The outcome of this case will not onlyimpact the DABUS U.S. patent applications, but could also havedrastic implications for other areas of patent law such as ourunderstanding of conception and obviousness.

Footnotes

1. Patent Application No. PCT/IB2019/057809 (filed Sept.17, 2019).

2. Id. at [72].

3. Complaint for Declaratory and Injunctive Relief at 3,Stephen Thaler v. Iancu, No. 1:20-cv-00903 (E.D. Va. Aug. 6,2020).

4. Id. at 4.

5. Id. at 5.

6. Id. at 5.

7. Id. at 7.

8. Id.

9. Id. at 8-9.

10. Id. at 12.

11. Id. at 16-17.

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Recent Developments In Artificial Intelligence And IP Law: South Africa Grants World's First Patent For AI-Created Invention - Intellectual Property -...