22/10/2021
In our previous insight here, we discussed the European Patent Office’s decision to refuse two European patent applications in which an AI system, referred to as DABUS, was designated as inventor.
Since the decision was issued on 27 January 2020, a notice of appeal was filed on 13 March 2020, requesting that the decision to refuse be set aside and that the DABUS AI system be named as the inventor as the actual deviser of the invention.
The grounds of appeal, setting out the detailed reasons why the decision should be set aside, run to some 38 pages in total and were filed on 27 May 2020, along with a large number of annexes filed in support of the grounds.
In summary, the appellant argued that:
a) the decision was based on facts and evidence not previously presented to the applicant;
b) the Receiving Section went beyond its competence in deciding the case;
c) the application was refused before expiry of the time limit for filing the designation of inventor
d) the Receiving Section refused to name the inventor on the published application in breach of Rule 20 EPC,
e) the Receiving Section issued two separately appealable decisions although the proceedings were consolidated, thereby forcing the applicant to file two identical appeals and pay two appeal fees.
Unusually, the President of the European Patent Office commented on the appeal on 11 May 2021, in a detailed document running to 12 pages including reasoning as to why the Receiving Section was competent to refuse the application.
The President argued that the designation of inventor requirements under the EPC is within exclusive competence of the Receiving Section. Further, the President argued that it was correct for the Receiving Section to issue the decision to refuse before expiry of the time limit for filing the designation of inventor because the appellant waived his right to file a designation of inventor within the remaining time limit.
Subsequently, the Board of Appeal swiftly issued its preliminary view of the appeal on 21 June 2021.
Regarding the argument a) that the decision was based on facts and evidence not previously presented, the Board of Appeal’s preliminary opinion is that this argument is insufficiently substantiated. In a similar vein, regarding point c), the Board of Appeal asked the appellant to “clarify the violations complained of, the causal link with the adverse decision, and the measures requested”. It appears that this may be difficult to do.
Regarding argument b) in relation to the competence of the Receiving Section, the Board of Appeal simply referred to the comments above made by the President of the EPO.
Regarding argument d), the Board’s preliminary opinion is that this results exclusively from the implementation of the opinion of the Receiving Section, and cannot constitute a substantial procedural violation.
Finally, regarding point e) the Board noted that this is the consequence of filing two independent applications.
In relation the issue of whether the applicant has the right to designate, as inventor, an AI system which is not a natural person, the Board commented that:
In the preliminary view of the Board, under the EPC the inventor designated for the purpose of a patent application must be a person having legal capacity. This follows from Article 60 EPC, according to which the right to the invention belongs to the inventor or to his successor in title, and Article 62 EPC, which refers to the right of the inventor to be mentioned as such. Legal capacity means the ability, according to a source of law, to be the subject of rights and duties.
Whether this legal capacity exists is governed not by the EPC but by national law. The EPC does not contain conflict of law-rules in this and other regard(s). However, this lacuna does not need to be discussed or filled for the purpose of these proceedings. The applicant’s case is not that the entity in question has some form of legal capacity under any applicable law. If the appellant had so argued, he would also bear the burden of proof, since the law concerned would be foreign law visa-vis the EPC; hence, iura novit curia-principle would not apply.
In short, it appears that the appellant’s initial arguments have not persuaded the Board of Appeal at this stage, and that the Board of Appeal’s preliminary view is that an AI system cannot be designated as inventor under the European Patent Convention.
However, Oral Proceedings have been scheduled towards the end of 2021 in which the appellant will have a final opportunity to argue the case before the Board of Appeal takes a final decision. As the proceedings are public, anyone can attend the proceedings.
Interestingly, all the other IP5 members (which consist of the 5 largest IP offices in the world) including Patent Offices in Japan, Korea, The People’s Republic of China and the USPTO have followed a similar approach not to allow an AI system to be designated as inventor. Indeed, in September 2021, a US court affirmed the USPTO view that AI cannot be cannot be an inventor under the US patent act and the decision can be read here.
Further, on 21 September 2021, the UK High Court dismissed an appeal against a UK IPO decision to refuse a patent application listing AI as an inventor because “DABUS is not, and cannot be, an inventor within the meaning of the 1977 Act, simply because DABUS is not a person”.
This is similar reasoning to that provided in the EPO’s preliminary opinion discussed above.
Thus, it is highly likely that a change of law will be required if AI is to be recognised as an inventor in Europe or the UK.
Other jurisdictions, however, have adopted a different approach.
For example, the South African Patent Office granted a patent for the DABUS invention in July 2021, as published here. The publication lists the inventor as “DABUS, The invention was autonomously generated by an artificial intelligence”. It is notable however that patent applications in South Africa are not subject to substantive examination.
Finally, the Australian Federal Court has held that the DABUS system can be named as an inventor on a patent application. However, the Commissioner of Patents has decided to appeal the decision, as set out here, and so it remains to be seen whether the decision in Australia will stand.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
