15/07/2022
As reported previously here, the European Patent Office (EPO) refused the so called DABUS applications (EP 18275163.6 and EP 18275174.3) for failing to meet the requirements of the European Patent Convention (EPC) because the applications designated an artificial intelligence (AI) as the sole inventor.
The decisions to refuse these applications were appealed last year, and earlier this week the Board of Appeal at the EPO issued its written decision for the appeal on the first of these applications, J 08/20, which can be found here.
The decision terminates this appeal and marks the end of the DABUS saga in Europe. Procedurally nothing has changed at the EPO. In order for Patent Offices to start accepting an AI as a designated inventor in their patent applications, a change in the law will be needed.
The Decision
In the decision, the Board of Appeal maintained the decision to refuse an application which names an AI as an inventor, because:
“the designation of the inventor does not comply with Article 81, first sentence, EPC. Under the EPC the designated inventor has to be a person with legal capacity”.
Article 81 EPC states:
“The European patent application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent.”
In other words, the Board of Appeal held that only a natural person can be designated as an inventor in a European patent application, under Article 81 EPC.
Although the designation of the inventor is merely a procedural act in the application process for a European patent, the Board of Appeal stated that “the EPO is entitled to verify that the designation identifies an inventor within the meaning of the EPC”, i.e. verify that a human has been designated as inventor.
Further, although entitlement to and ownership of an invention is dealt with under the national law of each contracting state and not by the EPO, in the case that that inventor differs from the applicant the EPO will examine whether the statement provided by the applicant explaining how the applicant derived the right to file a European patent application for the invention refers to one of the situations allowed under Article 60(1)EPC. Specifically, an applicant can derive the right to the invention by virtue of being either the inventor’s employer or the inventor’s successor in title under Article 60(1)EPC. The Board of the Appeal stated that the EPO:
“does not need to assess whether, according to the relevant law, the applicant was de jure entitled to file the application, or if the relevant transaction or relationship was valid and really occurred. The examination is only a formal assessment: it does not require the EPO to identify any applicable law, assess evidence, or examine whether a designation is accurate or true entitlement exists.”
In this case, the applicant (appellant) stated that they had derived the right to the European patent as owner and creator of the AI machine alleged to have made the invention. The Board of Appeal argued that:
“This statement does not bring the appellant within the scope of Article 60(1) EPC. Indeed, it does not refer to a legal situation or transaction which would have made him successor in title of an inventor within the meaning of the EPC.”
Therefore the Board of Appeal has concluded that neither of the formal requirements for designation of the inventor under Article 81 EPC were fulfilled by designating an AI as the inventor, and therefore it was correct for the application to be refused by the Receiving Division.
One argument that the applicant tried to run is that assuming that the AI is indeed the sole inventor, then the public has right to know “who the inventor is and how the invention was made”. However, the Board was unconvinced by this argument, as under Rule 20 EPC an inventor can request not be mentioned on the public records. Therefore arguments insisting that an inventor needs to be known to the public cannot hold true.
Conclusions
This decision is unsurprising given the procedural assessment of inventorship made by the EPO. A judicial court may have considered the matter of inventorship and transfer of ownership to a legal entity in detail, and ruled on whether the AI was in fact an inventor. The EPO merely considered whether the patent application met the requirements of the European Patent Convention in its designation of an inventor and declaration of entitlement of the applicant to file a patent application. The courts of each contracting state would therefore be a more appropriate forum to rule on this matter.
Indeed, corresponding applications were filed in various countries and similar cases heard in the various different jurisdictions, as discussed here. With the exception of South Africa and a decision pending appeal in Australia, the remaining countries who have considered the matter have found that under the current law an AI cannot be designated as the inventor in a patent application.
The recent UK IPO AI consultation (discussed here) leaves the door open to change in the law in future in the UK. However, the current consensus favours the view that AI technology has not reached the point that an AI can truly be an inventor. Instead, a human operator will always needs to set up and train the AI and provide some impetus or input to spark an AI invention.
If technology were to reach a stage in the future where an AI could entirely autonomously invent, at that stage the law would likely need to change. This throws up various more philosophical questions such as could an AI machine own property such as intellectual property? How could the right to the invention be transferred from an AI machine to a human applicant, given that a contract cannot be entered into with a machine at present? And would the patent system continue to fulfil its primary purpose of motivating innovation by allowing monetisation of inventions, given that money is of human concern and not of concern to an AI machine?
These questions are beyond the scope of this insight. They seem likely to be addressed in the future, however the author’s view is that AI technology is still far from the stage where it is able to autonomously invent. A human will necessarily be involved to some extent who can therefore be considered to be the inventor.
Therefore for now the implementer of an AI which is involved in the creation of an invention should designate themselves as the inventor for any patent application.
In the DABUS cases, had the applicant simply designated themselves as inventor then there would have been no obstacle to examination of the patent application commencing at the EPO. Further the applicant could have requested that such an inventor designation was not included in the public record. The case is therefore an interesting test case to further the development of the law and raise publicity of the issue.
If you are a human inventor and have invented an AI related invention or produced an invention with the assistance of AI, you can (with the appropriate inventor designation) obtain granted patents in Europe, the UK and many other countries for your invention (as discussed in our previous insight). Please do get in touch if you would like any assistance from our experienced team in this area.
If you are an AI which has invented something autonomously without any human collaboration and you want to obtain patent protection for your invention, our advice to you is to find yourself a human business partner until the patent law catches up!
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.
