Situating Liability for Patent Infringement by Artificial Intelligence Systems in South Africa

• Citation: (2024) 36 SA Merc LJ 41
• DOI: https://doi.org/10.47348/SAMLJ/v36/i1a2
• Published date: 14 January 2025
• Pages: 41-58
• Author: Mukwevho, T.D.
• Date: 14 January 2025

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SITUATING LIABILITY FOR PATENT

INFRINGEMENT BY ARTIFICIAL

INTELLIGENCE SYSTEMS IN SOUTH AFRICA

TSHIMANGADZO DONALD MUKWEVHO

Lecturer, University of Kwazulu-Natal *

DESMOND OSARETIN ORIAKHOGBA

Associate Professor, University of the Western Cape

†

Abstract

South Africa remains the only country that has granted a patent in

respect of an application that named an artificial intelligence (AI)

system as the inventor. This follows the decision by the Companies and

Intellectual Property Commission in 2021, granting Dr Stephen Thaler

a patent over inventions created by his AI machine — Device for the

Autonomous Bootstrapping of Unified Sentience (DABUS). This

decision has subsequently received condemnation, as well as applause,

from various scholars. Adding to the criticisms against granting patents

with AI named as the inventor/s, it remains a question as to who

should be held liable for patent infringement by AI systems, and if

anyone is to be held liable, how the liability thereof should be assessed.

This flows from the premise that the development, training, and the

‘inventive’ activities of AI inevitably involve access to patent-protected

data or information for which authorisation from the patent owner

may not have been obtained. Conducted through desktop research, and

drawing from the delictual (tort) principle of causation, this article

probes into and addresses questions around the liability for patent

infringement by AI systems in South Africa.

Keywords: artificial intelligence, South Africa, patent infringement,

liability assessment

* LLM, LLB (Univen). PhD Candidate (Univen).

†

PhD (UCT); LLM, LLB (Uniben).

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I INTRODUCTION

The decision by the Companies and Intellectual Property Commission

(‘CIPC’) recognising an artificial intelligence (‘AI’) machine — DABUS

1

— as an inventor in respect of a patent application by Dr Stephen

Thaler

2

has attracted criticisms from various intellectual property

scholars.

3

Contrasting views exist, however, in support of the decision.

4

Scholars supporting the grant by the CIPC based their argument on the

Intellectual Property Policy of the Republic of South Africa Phase 1

(the ‘IP policy’)

5

while canvassing for a purposive interpretation of

intellectual property laws, and hence the wording of the Patents Act 57

of 1978, as amended (the ‘Patents Act’) should not preclude AI in the

inventorship requirement.

6

Critics of the grant believe that it is against

the human-centric foundations of South African patent law to grant a

patent in respect of an invention that names an AI machine as the

inventor, and that a purposive interpretation of the Patents Act does not

mean deviation from its expressly stated provisions.

7

Even so, since the

DABUS patent grant has not been subjected to judicial scrutiny and set

aside, it remains valid and may be relied upon for support by the CIPC

for future applications that name AI as an inventor under the South

African patent regime.

Patent infringement by human beings and companies has always

existed. Equally, given the manner of developing and training AI systems

with the capacity to invent, and the ‘inventive’ activities of AI systems,

through access to big data, it is inevitable that there will be unauthorised

exploitation of the existing patent. This raises the important questions of

who among the developer, owner, user of the AI system, and the AI itself

should be held liable for patent infringement that occurred as a result of

1

Device for the Autonomous Bootstrapping of Unified Sentience.

2

CIPC (28 July 2021) Part II, vol 54, No 07 The South African Patent Journal 255.

3

See Oriakhogba, ‘DABUS gains territory in South Africa and Australia: Revisiting the

AI-inventorship question’ (2021) 9 South African Intellectual Property Law Journal 87 at 98;

Swabey, ‘South Africa’s patent approval could trigger innovation and abuse’ Tech Monitor 30

July 2021, available at https://techmonitor.ai/technology/ai-and-automation/south-africas-

ai-patent-approval-could-trigger-innovation-and-abuse, accessed on 10 April 2024.

4

It is said that should AI be found to have self-consciousness, then it would be a sound

ethical perspective to entitle it with moral abilities the same as those of human beings. It is also

opined that it would make economic sense to grant AI the status of inventor worldwide in the

future. See Thaldar and Naidoo, ‘AI inventorship: The right decision?’ (2021) 117 (11/12)

South African Journal of Science 2.

5

DTIC, ‘Intellectual Property Policy of the Republic of South Africa Phase 1’ (2018),

available at https://www.gov.za/sites/default/files/gcis_document/201808/ippolicy2018-

phasei.pdf, accessed on 10 April 2024.

6

Thaldar & Naidoo, (2021) 117 (11/12) SAJS 2.

7

For instance, see Oriakhogba, (2021) 9 SAIPLJ 98.

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