By: At van Rooy and Kobus du Raan
According to Forbes the Artificial Intelligence (“AI”) market is projected to experience substantial growth from $86.9 billion in revenue in 2022 to $407 billion by 2027. As such, it is no surprise that more questions are arising about inventorship and ownership of intellectual property of works and inventions created either by or with the assistance of AI.
As is usually the case in fast-evolving technology areas, regulatory frameworks are lagging behind the rapid development of technology. In the USA, the leading case in this regard is the 2022 US Federal Circuit decision of Thaler v. Vidal which found that, under the U.S. Patent Act, only natural persons can be recognised as inventors, thereby excluding AI systems from being listed as inventors in patent applications. As such, no matter how valuable/life-changing an invention may be, if created solely by AI, it is not patentable under U.S. law. As it was not necessary to do so, the Federal Circuit in Thaler v. Vidal did not consider the legal position in a situation where a natural person is assisted by AI in creating an invention. As such, there was still uncertainty about whether AI-assisted inventions would be patentable in the USA.
To address this uncertainty, on 13 February 2024, the United States Patent and Trademark Office (“USPTO”) issued examination guidance on the patentability of inventions developed with the assistance of AI (the “Examination Guidance”). The USPTO reasoned that patents function to reward human ingenuity and, for that reason, the inventorship investigation should "focus on human contributions." Thus, while AI-assisted inventions are not categorically unpatentable, a human must have "provided a significant contribution to the invention."
Going further, the USPTO incorporated the so-called Pannu factors into the Examination Guidance. The Pannu factors were established in the case of Pannu v. Iolab Corp., and are used to determine whether an individual has made a significant contribution to an invention. In accordance with the Pannu factors: a) an inventor must contribute in a significant manner to the conception or reduction to practice of the invention, b) the inventor’s contribution must not be insignificant in quality when measured against the full invention, and c) the inventor’s role must go beyond merely explaining well-known concepts or the current state of the art. Additionally, the USPTO created five guiding principles to assist in evaluating the patentability of AI-assisted inventions. These principles are: (1) using AI does not negate a person’s contributions as an inventor; (2) merely presenting a problem to an AI system is not enough for inventorship, but significant contributions might exist in specific problem-solving prompts; (3) merely reducing an invention to practice is insufficient for inventorship, but making significant contributions to the AI output can qualify; (4) developing an essential building block for the invention can be a significant contribution, even if the person did not participate in every step; and (5) merely owning or overseeing an AI system does not qualify a person as an inventor without significant contributions to the invention’s conception.
In the absence of such corresponding guiding principles in South Africa, the above principles may, at least for the foreseeable future, provide South African inventors with good guidance on whether their AI-assisted invention comprises patentable subject matter in South Africa.
* van Rooy and du Raan are patent attorneys and directors, KISCH IP.
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