In South Africa, Artificial Intelligence (AI) can be recognized as an inventor and be granted a patent. In the United States of America, however, AI is not recognized as an inventor and thus cannot be granted a patent. In Thaler v Commissioner of Patents [2021] FCA 879, the Federal Court of Australia held that an inventor as per Australian law can be an artificial intelligence system or device, but that finding was later overturned in Commissioner of Patents v Thaler [2022] FCAFC 62.
In Thaler v Vidal No. 21-2347, the United States Court of Appeals held that the definition of an “inventor” in the Patent Act meant that inventors must be natural persons, that is, human beings. That alone meant that AI cannot be granted a patent for what it creates under U.S. law.
Under Kenyan law, the Industrial Property Act, 2001, predictably does not address the issue but it does define an “inventor” as: “the person who actually devises an invention”. The Industrial Property Act, 2001 does not define the word “person”, but the Constitution of Kenya, 2010 states: “person includes a company, association, or other body of persons whether incorporated or unincorporated”. Under Regulation 12 of the Industrial Property Regulations, 2002, an application for the grant of a patent requires the following:
- for the applicant, the applicant’s name, address, nationality and country of residence.
- for the inventor, the inventor’s name and address.
This means that, in theory at least, AI may be eligible for a patent in Kenya because (1) a “person” may arguably include an AI, (2) the AI may be designated as an inventor in the application for the grant of a patent, and (3) another person (the applicant) may apply for the patent on behalf of the AI.
Once an inventor is granted a patent, they can enter into license contracts. A license contract is an agreement under which a licensee can utilise the invention for commercial gain subject to any terms they may agree with the inventor. Whether an AI should be granted a patent under Kenyan law is not the problem. The “problem” arises once the patent is granted to the AI.
We may have to rethink some provisions regarding intellectual property. Should a prospective licensee enter into a contract with an AI? If the AI violates the license contract by interfering with the licensee’s use of the invention, who does the licensee sue? Can the AI be granted a patent but the rights of enforcement be owned by a natural person? Should the AI designate a corporation/natural person that should be its representative in legal proceedings? The implications of granting a patent to an AI will not only affect intellectual property law, but they will also affect laws on civil procedure and corporations (for example, rules on who can be sued, and so on).
These are some of the questions that we may face in balancing the need to promote innovation and adjusting to AI. It is not enough to insist that we must keep things as they are and avoid granting AI patents. If, in the end, we do decide to do so, it may be prudent to first think before we act. The various questions that arise may be useful in the new normal.