Providing Patent Services in Chemical, Metallurgical and Process Technologies

South Africa has a very active, and deeply rooted, chemical, metallurgical and process engineering industry that continues to contribute significantly to the country’s GDP.

This provides fertile ground for market focused research and development work and, in this space, new technologies are therefore developed and commercially exploited at a rapid pace.

Patent protection holds significant value and relevance in this context. Its pursuit therefore has to be approached in a strategically sound manner, with the assistance of experienced and knowledgeable legal advisors who work to deliver commercially relevant outcomes for clients.

A well-established practice with top technical expertise

Adams & Adams has a well-established team of patent attorneys responsible for dealing with inventions in this field of technology.  The team runs a large, technically diverse practice, that draws the benefit of decades of serving clients in this field.

With industry experience and relevant academic qualifications in engineering, our patent attorneys are well-equipped to assist innovators in both pre-filing strategy discussions, and in the drafting, filing and prosecution of patent applications throughout the world.

Offering a broad range of experience with a variety of clients and technologies

Our service is not limited to particular technologies, which is evident from the wide range of our experience which includes work in the fields of petrochemicals, pharmaceuticals, nuclear energy, mining, minerals recovery, minerals processing, applied physical and organic chemistry, fluorine chemistry, pesticides, agriculture, radiochemistry, water treatment, explosives, bioprocess engineering, and many others.

We serve, and therefore are sensitive to, the diverse needs of a variety of clients, ranging from academic and research institutions, through to small businesses, to large corporates.  We are proud thereof that we work hard to understand the context in which each of these views intellectual property, and specifically patent protection, to ensure that we deliver value.

To protect the fruits of your labour, get in touch with one of our patent experts today. Find out more on how our experienced team can help you protect your innovation. We look forward to working with you!

Meet our Top Talent Patent Experts in patents for chemical, metallurgical and process technologies

Pieter Visagie – Partner – Patent Attorney

With a strong belief in giving clients personalised attention, Pieter works hard to understand clients’ needs based on their individual contexts and reasons for pursuing patent protection. He is efficient and expedient, supported by his background in chemical engineering and extensive experience in the drafting and prosecution of patent application, mostly abroad, for corporate clients over the past 14 years.

Thapelo Montong – Senior Associate – Patent Attorney

A keen researcher with practical experience in metallurgy and materials engineering, he is adept at gaining a deeper understanding of his clients’ inventions so that he can prepare, file, prosecute and obtain granted patents, both locally and abroad,  for his clients’ innovations.

Anri Bezuidenhout – Associate – Patent Attorney

Anri helps to navigate an approach for her clients to gain a competitive advantage in order to commercially benefit from their inventions. Her curious nature along with her industry experience means that she is able to quickly gain an in-depth understanding of an invention and how to best protect the client’s intellectual property.

Bringing Smart Solutions to the Protection of Biotechnology Inventions

Biotechnologists work tirelessly to improve our quality of life.  Never has this been more evident than in the current global health crisis that we face.  Their inventions address some of the world’s greatest challenges. Advancements in medicine, surgical procedures, food science, and agriculture, amongst many others, stem from innovations and technical achievements in this field of science.  Many of these may not have seen the light of day without the benefit of patent protection.

Why patents are important in the field of biotechnology

Significant time and resources go into the development and commercialisation of biotechnology inventions.  Considering typical delays to commercialisation arising from clinical trials, field trials, and compliance with regulatory requirements, return on investment is often far removed from initial development work.

Patenting in this field of technology is essential to safeguard efforts in recuperating and showing a return on financial investment.  There are many potential infringers lurking in the wings, to capitalise on the hard work of others.  In the absence of patent protection, they may have an unobstructed path to do so.

Financial considerations aside, the exclusivity constituted by patenting of biotechnology inventions fosters further technical advancements in the industry, as other players are required to innovate around existing patents and improve on existing products. While arguments for an open source morally motivated approach will always be made, and may in many respects hold true, one cannot disregard the market based need for commercial motivation which, although not always presented as such, has led to some of the greatest technological advancements of our time.  Patents serve prominently in this context.

Patenting therefore holds significant value and relevance in the field of biotechnology, and can in many cases be one of the most important assets owned by biotech innovators, provided they move to acquire such assets in a strategically sound manner.

Understanding the complexities of biotechnology patents

Patenting considerations in the field of biotechnology are difficult to navigate.  For guidance, innovators should take care to engage the services not only of knowledgeable, but of experienced legal advisors, who have an understanding of the law and of the technology.

Decisions relating to the suitability and availability of patent protection, the timing of when to initiate the patent application process, patent prosecution strategies in light of peculiar legal provisions and practices that differ vastly from country to country, and the like, are far-reaching, and all require careful consideration and substantive input.

At Adams and Adams, our team draws on the biotechnology research and patent prosecution expertise of senior associate Dr Charleen Rupnarain, and on the patent prosecution experience of partner Pieter Visagie, who together have almost two decades of relevant experience in these fields.  This is supplemented by our firm’s institutional knowledge that has been built over more than a decade of serving various prominent established and up-and-coming academic, research and industry biotechnology players.

Our biotechnology practice continues to serve clients in these sectors, across multiple focus areas that include medicines, industrial biotechnology, and agriculture. Specific projects that we have been involved in include diagnostics and treatments for tuberculosis, cancer, HIV and Covid-19, and applications in agriculture, horticulture, forestry, veterinary and microbiology.

Our experience in these areas, across multiple jurisdictions, equips us to assist biotechnology innovators in pre-filing strategy discussions, as well as in the drafting, filing and prosecution of patent applications, with skill, knowledge and experience, mindful of legal peculiarities and commercialisation challenges.

Our biotechnology patent experts recognize the value of scientific advancements and the opportunities resulting from their development. To protect the fruits of your labour, get in touch with one of our patent experts today. Find out more on how our experienced team can help you protect your innovation. We look forward to working with you!

South African Government calls for proposals for supply of ventilators

The South African Government has just put out an urgent call for proposals (“CFP”) for the design, development, production, and procurement of ventilators, as part of the local effort to combat the Covid-19 pandemic.  A copy of the CFP is available here.

Including other matters, the CFP requires respondents to address relevant intellectual property considerations in their responses.  In particular, respondents are required to indicate the status of relevant intellectual property, and to inform on any restrictions for access to, or on the use of, such intellectual property.

In responding to the CFP, technically one would expect respondents to consider taking at least one of the following routes: (i) to reverse engineer an existing ventilator, (ii) to obtain a manufacturing licence for an existing ventilator, or (iii) to develop a new ventilator from scratch.

Intellectual property considerations would apply to each of these routes.  Forms of intellectual property that would typically be relevant would include confidential information, trade secrets, know-how, patents, design registrations, and copyright.  Trade marks may also be relevant.

In the sense of confidential information, trade secrets and know-how, in the context of routes (i) and (ii), the question of access would probably be a significant consideration.  If access to such information is required by a respondent, it would probably need to be identified in responding to the CFP.

It is, however, noteworthy that, in respect of confidential information, trade secrets and know-how, the proprietor of the information would not be able to enforce any rights against a party with whom it has not contracted, except where there are nefarious acts at hand.  While the proprietor may therefore hold rights in and to such information, its ability to enforce those rights may be limited.

It is therefore unlikely that respondents would need to identify the existence of relevant confidential information, trade secrets and know-how to which they do not propose to seek access.  The relevant rights would probably also not be enforceable against them in the absence of a contract with the proprietor of the relevant information, or a nefarious act on the part of the respondent.

In all three routes, objectively enforceable rights such as those afforded by patent and registered design protection, would be particularly relevant.  In this regard, respondents probably would only need to concern themselves with local rights, since patents and registered designs are territorial in nature.  Unless foreign manufacture is foreseen, it is unlikely that foreign registered intellectual property rights would be relevant.

Looking at potential areas of risk:  In the case of route (i), a reverse engineered product may be based on a product that is the subject of a South African patent or design registration, which may then be enforced against persons who reverse engineered the product, who manufacture it, and who commercially exploit it.

In the case of route (ii) a product licenced for local manufacture from one party may be the subject of a South African patent or design registration of another party, with the same potential results as in the case of route (i).  Obtaining an indemnification from the licensor may be something to consider in this regard.  Also relevant in respect of route (ii), would be to validate the existence of registered intellectual property rights under which a licensor would propose to grant a licence.

In the case of route (iii), a new product developed by one party may fall within the scope of the protection afforded by the South Africa patent or design registration of another party, again with the same potential results as in the case of route (i).

To assess the abovementioned risks from the perspective of patent and registered design protection, name searches and subject matter searches may be conducted at the intellectual property division of the Companies and Intellectual Property Commission (CIPC).  Regrettably, the databases of that division are offline at the moment, due to the lockdown, and no searching is possible.  Pointing out this fact when responding to the CFP would be advisable.

Adams & Adams has its own in-house database of some of the information that is contained in the CIPC databases, and we are therefore in a position readily to assist with such searches.  Name searches are probably the most expeditious and conclusive searches to conduct.  Subject matter searches are more comprehensive, but are regrettably extremely time consuming.  Therefore, if the names of relevant developers and manufacturers are known, whether as possible proprietors or licensors, conducting name searches in their names is advised.

That said, it would not be possible to make any conclusive assessments of the relevance of any intellectual property registrations at least until the CIPC has reopened in May.  For such assessments to be conducted, access to the official patent register and to some official documents is required, which is not possible at the moment.  It may be worth pointing this out in responses to the CFP.

Out of interest, we point out that the number of entries in our in-house records containing the word “ventilator” in their title or abstract is just under 250.  While some of these entries would relate to trade marks and others to non-respiratory ventilators, it is nonetheless clear that this field of technology has in the past received attention from inventors in South Africa.

In respect of copyright, it is worth noting that copyright cannot be enforced against the reproduction of a commercially available industrially manufactured reproduction of a three-dimensional article that has a utilitarian purpose.  Copyright protection is therefore unlikely to be relevant to routes (i) and (iii), although it would depend on the actual facts of the matter.  Caution is advised.  In the case of route (ii), licensing under the copyright of design drawings and prototypes may be relevant, however.  Our copyright team is available to assist with advice on such matters.

Also in respect of route (ii), it should be ensured that, from the perspective of the licensee, all relevant licences would be granted to it by the licensor and that there would be no outstanding rights that may still be enforced against the licensee by the licensor.  Obtaining a guarantee or indemnification to this effect from the licensor may be advisable.  There are also other aspects to the licensing route that would require specialist input from an intellectual property perspective.  Our intellectual property licensing team is available to assist respondents choosing to follow this route.

Finally, in respect of route (iii), attention should be given to protect, where possible, intellectual property that emanates from fresh development work.  While patent and registered design protection would not be granted for some months and would therefore possibly not be directly useful in the immediate future, one must bear in mind that a patent has a 20 year horizon and that there may still be future value in securing intellectual property protection at this time.

In respect of pursuing protection, it is very important to note that non-confidential disclosure of an invention or design may destroy the possibility to obtain registered intellectual property protection for it.  It is therefore essential that confidentiality be maintained for as long as possible, and that steps be taken to secure priority rights by the filing of a patent or registered design application before any non-confidential disclosure is made.  While CIPC is closed, such applications would need to be filed overseas.  In this regard we have reached out to our agents in other countries for assistance, and our patent and registered design prosecution team is therefore ready to be of service.

Pieter Visagie & Vishen Pillay

(pieter.visagie@adams.africa; vishen.pillay@adams.africa)

ADAMS & ADAMS

Entrepreneurs to capitalise on SA’s budding cannabis industry

With deregulation glinting globally, the cannabis market is expected to explode.  New Frontier Data’s Global Cannabis Report: 2019 Industry Outlook estimates that there are around 263 million legal users of cannabis and cannabis-related products worldwide.  Africa is home to 83 million of these. The report estimates that the total legal cannabis market hit a value of $344 billion in 2018, and ranks Africa as one of the top five regional markets, accounting for $37.3 billion.

Both locally and abroad, stigma and extensive regulation continue to kneecap the potential for growth in the cannabis industry.  South Africa’s Constitutional Court ruled in 2018 that private use and cultivation of cannabis are no longer criminal offences, with regulations due within the next few months. The South African government has eased regulations on the marketing of certain cannabinoid-containing products, but these expire soon and we are yet to see what the government proposes to do going forward.

The potential for South Africa to contribute to and draw benefit from the development of the cannabis industry appears to have been recognised by the government. In a country plagued by unemployment and hungry for new opportunities for entrepreneurs, it is believed that this should be seen as a welcome move.

Protecting Investment

In seeking to capitalise on opportunities arising from prospective cannabis deregulation, entrepreneurs would be wise to protect investments of time and money by proper deployment of contracts, business practices and intellectual property registrations (e.g. patents, trade marks, and plant breeders’ rights).

Prospective entrepreneurs face a risk that, through some otherwise harmless actions that they may take in the development or exploitation of cannabis-related inventions, they may fall within the scope of the exclusivity that is afforded by an existing patent of another party.  Entrepreneurs also have an opportunity, however, to place themselves in such a position over the market, by moving industriously to establish exclusivity where there are technology gaps to be filled.

All too often, entrepreneurs leave the creation of a solid legal basis for their businesses by the wayside, only to be disadvantaged later-on. Particularly in a developing industry, getting your affairs in order early on may prove to be invaluable when others are later trying to enter the market, riding on the coattails of those before them. Entrepreneurs should also be mindful of legal constraints that they may face in generating a return on investment. Such constraints would exist, most prominently in government regulation and the intellectual property rights of others.

In respect of intellectual property, branding considerations relating to cannabis have been discussed extensively by Kareema Shaik, Partner at Adams & Adams, in two earlier articles. Looking further afield, at the protection of cannabis-related inventions e.g. by way of patent protection, a prominent consideration from the perspective of third-party rights, but also an opportunity for inventors, is that there is a lack of technical publications on cannabis due to its longstanding regulation. Since the scope of patent protection that may be obtained for an invention is limited by prior disclosures, a lack thereof has the result that patents of a broad scope may be obtainable.

Prospective entrepreneurs therefore face a risk that, through some otherwise innocuous actions that they may take in the development or exploitation of cannabis-related inventions, they may fall within the scope of the exclusivity that is afforded by an existing patent of another party.  Entrepreneurs also have an opportunity, however, to place themselves in such a position over the market, by moving industriously to establish exclusivity where there are technology gaps to be filled.

Agricultural innovation: From land or lab

The strongest point of origin from which South Africa’s cannabis market may take flight is the agricultural sector. It is well-known that South Africa has optimal environmental conditions for the cultivation of cannabis – think of the infamous so-called “dagga belt” in the Eastern Cape. This potential for the agricultural exploitation of cannabis offers far-reaching economic opportunities for our country, even on the most basic levels.

While it has long been possible to obtain a permit for cultivating cannabis, the justification for doing so has been lacking as a result of regulation.  Now, with deregulation on the horizon, this may change radically.

From the perspective of legal protection for innovative efforts in the agricultural exploitation of cannabis, there are some technology areas on which innovative entrepreneurs may wish to consider focusing their attention in seeking to establish exclusivity, taking into account some aspects of intellectual property law.

One aspect is that effective exclusivity may be established in respect of new plant varieties that are created by breeding, through the registration of plant breeders’. Multiple varieties of cannabis are already known, and this emphasises the possibility to breed other varieties with improved characteristics to serve respective market segments.

The often-controversial possibility of genetic engineering is another aspect, since patent protection may also be obtained for genetically engineered plants and, more broadly, the specific engineered DNA sequences of such plants.

A further aspect is the innovative culture of South African farming communities, specifically in respect of cultivation techniques and devices. These techniques and devices are also usually ideally suited for protection by patents.

Medicinal innovation: From complementary to therapeutic

As indicated earlier, while non-private cultivation of cannabis without a permit, and the development, manufacture and commercial exploitation of cannabis and cannabis-derived products (subject to certain exceptions), remain illegal in South Africa, a recent exemption has eased the regulation of cannabis, specifically by excluding products containing certain prescribed concentrations of cannabidiol (CBD) and tetrahydrocannabinol (THC) from regulation.

This exemption does not extend to potential therapeutic uses of cannabis. Since cannabis has long been, and to a large extent remains, a highly regulated substance, there has been a lack of scientific research to provide acceptable evidence to support claims of its therapeutic value. The legal position in South Africa, that cannabis may not generally be said to have any therapeutic benefit, has therefore not been changed.

One would hope, however, that future deregulation of cannabis would be sufficiently extensive for research into the therapeutic usefulness of cannabis to be justified. Reaching that point however, may be some years off, considering the normal course of the approval of therapeutic substances.

Unlocking the opportunities for South Africa: Incremental deregulation

With positive sentiment towards the cannabis market on the up, it is exciting to see that South Africa appears to be following the deregulation lead of countries like Canada. By unlocking the potential for the development of a new industry, government is bound to stimulate a flurry of exciting local activity on many fronts, including in research and development, agriculture, and production.

As a spin-off, one would hope to see an increase in intellectual property registrations as entrepreneurs take up the available opportunities.

The excitement notwithstanding, it must be appreciated that cannabis deregulation remains a contentious topic and that, in a country with complicated and far reaching socio-economic challenges, a sophisticated and pragmatic approach to its deregulation must be adopted. It is believed that deregulation on an incremental basis, that serves the needs of the market as it develops but also recognises the legitimate social concerns of citizens, would probably be a more sustainable approach to implement than blanket deregulation. In this regard, research and development work would be invaluable, to inform practical regulations that protect the public where needed and develops the market where possible.

One would imagine that, having tested the waters with the recent exemption, government would be willing to make the exemption more permanent, and even expand upon it.  Furthermore, it is hoped that there would be a move to create more opportunities for commercial cultivation of cannabis in light of such, and possibly other exemptions, bearing in mind the need to create commercially viable opportunities for small-scale farmers, to achieve productive utilisation of agricultural land.

All-in-all South Africa is hopefully has exciting times ahead in the prospective industry of cannabis, to the advantage of the local industry and economy.

EPO decides on AI inventorship

Introduction

The European Patent Office (“EPO”) has finally been given, and has taken, an opportunity to pin its colours to the mast on the question of how it would interpret its legal provisions, as they stand, on the naming of inventors in cases where inventions are asserted as having been created by artificial intelligence (AI).

This has come about in two recent decisions by the Receiving Section of the EPO (hereinafter simply referenced as “the EPO”), given in oral proceedings, in which the EPO rejected two patent applications (publications numbers  EP3564144 and EP3563896) on the basis that an AI system, named DABUS, not a natural person, was identified as the inventor of the inventions that were the subjects of the respective applications.  The EPO did so essentially on formalistic grounds and true to the EPO’s characteristic textually-bound interpretation practice, but nevertheless with substantive basis in law.

Thus, in the context of European Patent Convention and its rules, as they stand, the debate on whether or not AI can be named as inventors for the purpose of pursuing patent protection has, subject to the possibility of appeal, been decided.

Regrettably, the decision taken by the EPO provides no clarity on the question of the identity of the person(s) to identify as inventor(s) in such circumstances, in lieu of the identification of AI.  Applicants for patents for AI-created inventions are therefore left with no clear path forward in respect of naming inventors in their patent applications.  A legitimate concern that has been raised in this regard is that the EPO may have ended up creating a de facto exclusion of AI generated inventions from valid patentability, as discussed below in more detail.

Naming of inventors

It is a universal requirement in patent law for a valid patent to name the true inventor(s) of the invention that is claimed in the patent.  Failure to do so is a serious matter, as it can be viewed as an injury, and in some cases as fraud, against the true inventor(s).  In fact, in many countries a failure to identify and name inventor(s) accurately in a patent may, directly or indirectly, provide basis for invalidation of the patent.  This takes into account that the right to pursue patent protection for an invention originates from, and therefore by default lies with the true inventor(s).  Usually, proof of the transfer of the right to pursue patent protection for an invention, from the inventor to the applicant (where the applicant is not the inventor), is therefore required in support of a patent application for the invention.

An argument can be made that the current patent laws of most nations and patent treaty organisations at least imply, where they do not expressly state, that inventors should be natural persons.

For example, in the case of the EPO, Rule 19 of the Rules to the European Patent Convention (EPC) requires an inventor to be identified in terms of a “…family name…” and “…given names…” and Rule 21(1) provides for an incorrect designation of an inventor to be corrected only with the consent of the “…wrongly designated person…” (emphasis added).  The EPO boards of appeal (e.g. in J 7/99) have also solely referred to inventorship in the context of natural persons and the rights that naturally attach to them.  Underlying these rules is the general requirement in Article 81 of the EPC that “the European patent application shall designate the inventor” and “if the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent”. While this article itself does not expressly state that an inventor must be a natural person, the rules lead one to expect that.

In the USA, the position appears to be more definite, in that the United States Code defines an “inventor” as the individual who invented or discovered the subject matter of the invention and indicates that an “individual” includes every infant member of the species homo sapiens who is born alive, at any stage of development.

In South Africa, while there is no definition of “inventor” in the South African Patents Act, a patent application is accompanied by a form containing a declaration as to the identity of the inventor, which declaration includes language to the effect that the inventor(s) is/are “…the person(s)” (emphasis added) identified in the form, again implying that an inventor ought to be a natural person.  This is also supported, to some extent, by various forms required in support of a patent application, requiring inventors to be identified by their “…full names…”.

Against the backdrop of these, and other, common and statutory law provisions, the question that remained, in the case of the EPO, and that remains in other jurisdictions, was/is whether, taking into account the potentially serious consequences of incorrectly naming inventors in a patent application, naming AI as inventor would be accepted by patent offices, i.e. whether patent offices would, in light of the rapidly evolving technological landscape, be willing to interpret their patent laws to the effect that inventorship may extend beyond natural persons, in cases where it is an applicant’s assertion that an invention was created not by a natural person, but by artificial intelligence.

It is at the outset submitted that, in light of the potential consequences of an error in naming inventors, whether intentionally or not, it would in the absence of guidance not have been, or would not be, irrational of an applicant for a patent application to name a machine as an inventor, where the machine has, in the applicant’s view, contributed to the gist of the invention for which patent protection is sought.

Before the EPO

Dr Stephen L. Thaler filed the abovementioned patent applications, in his own name, with the EPO.  In doing so, he left blank the field in which the inventor needs to be identified.

In response to subsequent objections to the applications from the EPO, for the omission of inventor details (which, as noted above, is required in terms of Article 81 and Rule 19 of the EPC), Dr Thaler indicated that the inventor of the claimed inventions was an AI system that he had named “DABUS” and that he had acquired from DABUS the right to the invention by virtue of employment of DABUS.  That response was later supplemented with a statement to the effect that Dr Thaler is the successor in title of DABUS.

Dr Thaler included in his response a request for oral proceedings on the matter, which request was granted by the EPO.  The EPO’s summons to oral proceedings confirmed an objection to the effect that the applicant failed to comply with abovementioned Article 81 and Rule 19(1), in that the applicant did not provide, as designation of the inventor, the required family name, given names and full address “…which must be those of a natural person”.  The nature of the objection was such that if it was not overcome, the application would be rejected.

The EPO’s decision and its basis

After hearing the applicant, who advanced various arguments on why the application should be accepted citing the AI system as inventor, including:

  • the applicant’s obligation to name the true inventor,
  • the possible inadvertent creation of a de facto ground of unpatentability in not recognising AI as inventors,
  • unfair discrimination against mononymous persons in requiring a family name and given names to be provided,
  • non-requirement for legal competence for rights to come into existence and pass to a legal successor in certain circumstances (e.g. in the case of minors), and
  • that a specific provision in the EPC Rules (requiring a family name and given names for an inventor to be supplied) cannot be used to interpret a general provision in the EPC itself (that the true inventor should be named),

the EPO issued a decision that the application be rejected.

The EPO discussed various provisions of the EPC, and their history, in justifying its decision, but ultimately its reasoning in rejecting the applications can be explained at the hand thereof that, as stated in the Decision, the family name and full names required to be included in identification of an inventor must be those of a natural person.

The EPO reasoned that names given to things cannot be equated to names given to natural and legal persons, since the names of natural and legal persons are central to the determination of their legal identity and, as such, the exercising of their legal rights, whereas Al has, at present, no rights in law because they have no legal personality comparable to natural persons.  The name of an AI system is therefore not associated with any legal identity, in contrast to the name of a natural or legal person.

The EPO confirmed that legal personality is assigned to a natural person as a consequence of their being human, and to a legal person based on a legal fiction, recognised in law. Where non-natural persons are concerned, legal personality is only given on the basis of legal fictions, which must be recognised in law. The EPO went on to note that such legal fictions are, in law, either directly created by legislation, or developed through consistent jurisprudence.

In the case of Al inventors, there is no legislation or jurisprudence establishing such a legal fiction. It follows that Al cannot have rights that come from being an inventor, such as the right to be mentioned as an inventor or to be designated as an inventor in the patent application.

General remarks on the decision

The EPO’s abovementioned reasoning, and therefore the decision, cannot be easily disagreed with, if at all.  As the EPO pointed out, the law that binds it, in its current form, does not provide any basis for any rights of any kind to be afforded to entities for which legal personality has not yet been recognised in legislation or jurisprudence.  AI falls into this category of entities and therefore have no legal personality that allow rights to attach to them independently.  Thus, there is no legal basis for a right to file a patent application for an invention, created by AI, to attach to AI on the basis of it having created the invention.

So, to whom does such a right attach?  Regrettably, as noted earlier, there is no clarity in this regard.  A practical problem therefore now arises for applicants seeking to patent AI generated inventions before the EPO.  Citing AI as inventor would cause such applications to fail during the formality examination stage of a European patent application.  Citing a natural person as inventor would allow the application to pass this stage, and even for a patent to be granted on the application (considering that the EPO does not investigate the accuracy of the naming of inventors, as expressly provided for in the rules to the EPC).  However, the validity of such a patent may then be vulnerable for incorrect naming of inventors.  That said, it is so that only in limited circumstances is an incorrect identification of an inventor materially consequential post-grant, and often challenges based thereon must be raised by the aggrieved person.  Again, here, the question arises who the aggrieved person would be if AI is omitted as inventor, considering that AI would not have legal identity that would give it standing to be aggrieved and that there is no clarity who the aggrieved party would be in its stead.

As things stand, there appears to be no alternative, therefore, for applicants of EPO patents for AI-created inventions to make their best efforts in identifying those individuals who worked most closely with an AI system in causing that system to create an invention, and naming such individuals as inventors, if they wish to have any chance of successfully pursuing patent protection before the EPO.

Remarks on the South African context

Substantively, there is no basis to assert that the legal position in South Africa would differ from that at the EPO.  Nothing in South African law recognises legal rights as attaching to anything other than natural and legal persons, and nothing in our law has thus far recognised AI as either of these.  As such, they remain inanimate objects, unrecognised by law in a form other than as the property of a natural or legal person.  There is therefore no substantive basis in South African law for AI to be recognised as an inventor, as the source of the right to pursue patent protection.

In respect of naming AI as inventor one must differentiate between the formality examination that is conducted by the South African Patent Office (the “Patent Office”) and the substantive grounds for patent invalidity that may be relied on by any person to apply for revocation of a granted patent.

In the formality examination, the Patent Office, like the EPO, does not examine whether the named inventors are, in fact, the true inventors.  It merely checks whether the inventor field in the application documents has been filled out.  There is no precedent of a required standard in this regard, no view can therefore be expressed on whether the Registrar would object to the citing of AI in the inventor fields.

Further, the Patent Office also checks whether, where the inventor is not the applicant, proof of the applicant’s right to apply, to the satisfaction of the Registrar, has been supplied by the applicant.  A failure to do so would elicit an objection, and in this regard applicants may face difficulty where they had named an AI system as inventor.

In respect of post-grant revocation proceedings, relevant grounds for revocation relating to inventorship include that the person who applied for the patent was not entitled to apply, that the application for the patent was made in fraud of the rights of another person, and that a material misrepresentation was made on the declaration form executed by the applicant.

Thus,

  • the naming of AI as inventor, if not objected to by the Patent Office, may provide basis for revocation on the basis of non-entitlement, considering that no rights came into existence, due to the absence of legal identity on the part of the AI inventor, that could have placed the applicant in an entitled position to apply for a patent; and
  • the naming of an inventor other than AI, where an AI system made an inventive contribution, may provide basis for revocation for material misrepresentation on the declaration form.

Closing Remarks

In the context of South African patent law and practice, the current decision of the EPO emphasises that AI-created invention patent applicants are stuck between Scylla and Charybdis in respect of the identification of inventors in their patent applications.

On the one hand, naming a natural person who is, after all, not the true inventor of the invention, may render the eventually granted South African patent susceptible to attack on material misrepresentation. On the other hand, naming the true inventor of an invention as AI can result in the patent application being attacked for lack of entitlement.

To advise applicants as to an appropriate course to take in such circumstances is difficult.  It is believed that, ultimately, it would be more cautious, as suggested above in respect of the situation at the EPO, to name natural persons as inventors, since at least then the existence of a right to apply for patent protection can be asserted.  Where such persons are not identified, no such assertion can validly be made.

In the interim, the question of who to identify as an inventor in AI generated inventions therefore remains one for the courts to decide and may be debated for some time still.

For more information please contact Thapelo Montong or Pieter Visagie or any of the patent experts at Adams & Adams.