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08.10.21

South Africa and Australia break from U.S. and U.K. to give DABUS its first IP breaks

BY , Daniel J. Schwartz

The questions of whether artificial intelligence machines (AI) should be afforded intellectual property rights and whether AI machines can qualify as an inventor continue to be explored as countries such as South Africa and Australia take steps contrary to earlier rulings by the US and UK. As discussed below, recently South Africa became the first country to grant a patent for an invention conceived by AI, and Australia became the first country to have a federal judge rule that inventions developed by AI can quality for patent protection.

South Africa

The South African patent was invented by DABUS—Device for the Autonomous Bootstrapping of Unified Sentience—and relates to a "food container and devices and methods for attracting enhanced attention." The patent was published in South Africa's Patent Journal on July 28 and lists Stephen Thaler as the applicant and "DABUS, The invention was autonomously generated by an artificial intelligence," as the inventor.

Although an unprecedented and perhaps unexpected step by the South African Patent Office, some have pointed out that while patent law in many jurisdictions is very specific in how it defines an inventor—see, e.g., the statutory language 35 U.S.C. §100 (f)-(g) defines "inventor" and "joint inventors" as natural persons—South Africa patent laws do not define "inventor" nor does the country have a substantive formal patent examination process. Because the same patent has already been rejected by the US, UK, and EPO, it will be telling to see whether the patent is opposed and whether it survives the opposition.

Australia

Australia similarly turned heads when on July 30 the Australian Federal Court reversed the Australian Patent Office's rejection of Dr. Thaler's patent application for one of the DABUS inventions. Judge Jonathan Beach of Melbourne issued a 41-page opinion outlining why Australia's current statutory framework could be read as permitting the issuance of patents where an AI system is the inventor, declaring that: "it is a fallacy to argue . . . that an inventor can only be human." This opinion is in stark contrast to those issued by other courts around the world but is also appealable to the High Court of Australia.

Until now, Dr. Thaler's attempts to procure patents on behalf of DABUS have been thwarted by the European Union, United Kingdom, and United States. In February, the European Patent Office (EPO) Board of Appeal (BOA) responded to appeals of the EPO's rejection of the DABUS patents, agreeing with the EPO's January 2020 decisions that, under the European Patent Convention (EPC), an inventor on a patent application must have "legal capacity," meaning the "ability, according to a source of law, to be the subject of rights and duties." The oral proceedings are scheduled for December 21, 2021. More recently, our April 9 Blog Post discusses Dr. Thaler's uphill battle of seeking patent protection for AI-based inventions in the United States in Thaler v. Iancu et al., No. 1:20-cv-00903 (E.D. Va.). There, Judge Brinkema stated that current legislation restricts the definition of "inventor" in the Patent Act to humans and that it would be up to Congress, not the courts, to change that. An order has not yet issued.

South Africa's and Australia's actions are unprecedented in the current AI-IP climate. Prior to these two countries, jurisdictions which had considered the issue rejected the notion that current statutory frameworks permit naming an AI machine as an inventor. With a number of orders, appeals, and bills pending, the question of what comes next for AI and IP is one that will be asked more and more frequently. We will continue to follow any AI developments in the courts, agencies, Congress, state legislatures, and across the globe.

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Paulina M. Starostka

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Daniel J. Schwartz

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