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Recently, South Africa became the first Country to grant patent rights to an artificial intelligence (AI) system.¹The invention relates to a “food container based on fractal geometry” that involves interlocking food containers.² The application listed an artificial intelligence (AI) system, called DABUS, as the inventor, and the machine’s owner, Stephen Thaler, as the patent owner.³ The application was filed under the Patent Co-operation Treaty (PCT) International Patent System seeking protection in the United States, Europe, Australia, and South Africa. Australia followed South Africa’s direction a few days later.⁴

The United States Patent and Trademark Office (USPTO) rejected the application on the grounds that their patent laws require that an inventor be a natural person as it uses pronouns like “himself” and “herself” to refer to the inventor.⁵ They also stated that AI does not meet the threshold for “conception,” which is traditionally understood as a mental act in the mind of the inventor(see decision here).⁶ The European Patent Office (EPO) also rejected the application on the grounds that their patent laws recognize an inventor as a natural person. In their decision, they stated that AI systems or machines have at present no rights because they have no legal personality comparable to natural or legal persons, and as such not legally capable of possessing rights awarded by patent protection (see decision here).⁷

It is worth noting, though, that South Africa does not offer formal examination and instead requires applicants to merely complete a filing for their invention.⁸ This requires a check box sort of evaluation: ensuring that all the relevant forms have been submitted and are duly completed.⁹ On who can apply for a patent in South Africa, the Patent Act states that only ‘the inventor or any other person who has acquired the right from the inventor or both’. Interestingly, the South Africa Patent Act uses the pronoun ‘him’ to describe the inventor. In the US, use of pronouns ‘himself’ ‘herself’ in the law was used to interpret the intention of the patent legislation in that jurisdiction as excluding an AI machine.

Bringing it home: DABUS patent in Kenya?

Would we? Would we not? Would we consider it? We attempt to answer this question in our three-part discussion below:

First, in Kenya, patents are governed by the Industrial Property Act, 2001 (the Act). The right to a patent exclusively belongs to the inventor.¹⁰ This right extends to the right to be named as the inventor both in the patent and patent application. There are two exceptions to this rule: one where the inventor is deemed incapable before the law in which case they are replaced by their legal representative. This would for instance be in the case of death, bankruptcy, mental incapacity resulting in the appointment of a legal representative. Two: in the case the inventor does not wish to be named as the inventor. This right is so sacred that where the inventor does not wish to be named as the inventor, they have to prepare and file a special written declaration addressed to the Managing Director to that effect. Further the inventor has to confirm and denounce this right in regard to the specific application and in favour of the person who files the application.¹¹ Bottom-line, the inventor has to be named or a statutorily required explanation is offered.

1. Application requirements

Once filed, an application is examined to confirm compliance with the formal requirements of the Act. To be accepted, section 41(7) requires an application should comply with the requirements set out under section 34(3) of the Act.¹² In turn, Section 34(3) requires an application to state the name of and other prescribed data concerning both the applicant and the inventor. In case the applicant is not the inventor the request shall be accompanied by a statement justifying the applicant’s right to the patent.¹³ The prescribed data as indicated in form IP3-the application form are the inventors name; whether or not they are sole or joint inventors; and whether a statement justifying the applicant(s)’right to the patent has been provided.

Simply reading these sections, for an application to be accepted for formal examination it doesn’t matter who the inventor is, nor does it matter whether or not they are natural persons. Instead, for an application to proceed to the next step, details of the applicant are necessary and ought to be disclosed as required.

2. Patentability requirements

On patentability, section 22 provides that an invention is patentable only if it is new, involves an inventive step and industrially applicable.¹⁴ Of these three, the requirement for an inventive step is the one which somewhat includes reference to the inventor. Under this requirement, the key question to answer would be whether an invention involves an inventive step. Determining whether an invention involves an inventive step is subjective, and thus depends on the examiners opinion and reasoning.

An invention is considered as involving an inventive step if, having regard to the prior art¹⁵ the invention is not obvious to a person skilled in the art. The “person skilled in the art” is presumed to be an ordinary practitioner aware of what was common general knowledge in the art at the application date.¹⁶ In the case of an application including an AI machine, its inventiveness would still be judged against those existing in the form of prior art. There are several questions here for instance, would inventions by human beings be deemed to be prior art for applications by AI machines? Would human beings or natural persons be deemed to be ‘persons skilled in the art’ in the case of AI machine inventions? Would it be fair to AI machine inventors include prior art from human beings-natural persons or should prior art for such applications be limited to those from other AI machines? Would there be a difference in functionalities of an invention based on their inventor?

The requirement on novelty and industrial applicability are concerned with the invention’s description and details. They may not be immediately clear on how they would be affected by the status and/or capacity of the inventor. For instance, is it possible for an invention to have industrial applicability within an exclusively operated and utilized AI processes/products/inventions and not in human products? Noting the advancement of AI technology and innovation, is it possible for two parallel industries for purposes of inventions i.e. one for natural persons and another for the AI machines? Time will tell.

3. The text of the Industrial Property Act

In defining the inventor and the rights assigned, the text of the Act presupposes that inventions are results from engagement processes by human beings. There are numerous references to ‘person’ when referring to the inventor, and invention and associated rights. The Interpretation and General Provisions Act (IGPA) defines a ‘person’ to include a company or association or body of person corporate or incorporate. This is in addition to the definition of a person extending to human being. Essentially, a person in Kenya is either a natural person or a group of natural persons however presented. It is to the person, natural or legal, that the law confers rights and responsibilities. The IGPA does not anticipate a non-human person such a machine.

Further, a general reading of the Industrial Property Act does not present the possibility of having non-human inventors. In addition to being guided by the definition under by the IGPA, the Act adopts the meaning of a ‘person’ as being a human being. For instance the Act defines an inventor to mean a person who devises the invention and would include a legal representative of the inventor.¹⁷ In addition, section 30(5) the right to a patent may be assigned or may be transferred by succession. Succession is the process or proceedings undertaken to settle a natural person’s estate after their demise. These proceedings authorise the distribution of a deceased’s assets and liabilities. A right to a patent is an asset and would therefore form part of the estate for purposes of distribution.

Borrowing from the reasoning given in the determination by the USPTO seen above, the whole Act uses the pronouns ‘he’ and ‘himself’ whilst referring to the inventor. Despite the fact that these pronouns are not inclusive of all genders in Kenya, they are an indication that the inventor-ship is hinged on the inventor being a natural person.

So, where would Kenya stand on DABUS?

The answer is, it depends. Depends on several factors including if an AI machine would be deemed to be a person (machine?) within the meaning of the laws of Kenya; on the patent examiner whose opinion determines whether the invention involves inventive step; is industrially applicable and if its novel.

In the wake of technological development and innovation, the traditional means of administering intellectual property rights are being challenged. The instance of DABUS is one example, of many others to come, that demonstrates the need of having discussions around the role intellectual property rights should play, and changes that need to happen in order to protect and encourage further innovations.

For more about how AI works please watch our simulated video here and check our work in AI here.