J 8/20: EPO’s Board of Appeal provides written decision and reasons reconfirming AI cannot be named as inventor on European patent applications

In the latest update on the artificial intelligence (AI) inventorship saga, the legal Board of Appeal of the European Patent Office has now provided their written decision and reasons for dismissal of an appeal that AI should be recognised as an inventor of a European patent.

We have previously covered the decision of the UK Court of Appeal which similarly dismissed an appeal that the very same AI system should be recognised as an inventor of a UK patent, which can be read here.

Whilst many jurisdictions seem to agree with the UK’s and EPO’s position, the South African Patent Office however, was willing to issue the world’s first patent listing with AI as the inventor and the AI’s owner as the owner. Our commentary on this news can be read here.

Background

On 17 October 2018 and 7 November 2018, Dr Stephen Thaler filed two patent applications at the EPO without designating any inventors. In response to the resulting communications inviting the applicant to designate an inventor, Dr Thaler indicated “DABUS” (Device for the Autonomous Bootstrapping of Unified Sentience) as the inventor, with the comment that “the invention was autonomously generated by an artificial intelligence”. Furthermore, Dr Thaler argued that he, as the owner of the machine, had acquired rights to the patent as the employer, followed by a subsequent corrected designation of the inventor asserting that he had derived rights in the invention as the successor in title of the machine by virtue of being its owner.

Both applications were refused by the receiving section on the grounds that: a) designation of a machine as inventor did not meet the requirements of Article 81 and Rule 19(1) EPC, an inventor within the meaning of the EPC must be a natural person; and b) a machine has no legal personality and can neither be an employee of the applicant nor transfer any rights to him.

This decision therefore covers two main topics: 1) whether the ‘inventor’ within the meaning of Article 81 EPC must be a natural person; and 2) to whom do rights within the meaning of Article 60(1) EPC belong if no natural person inventor exists, and how would such rights be transferred.

Main request

The appellant’s main request listed DABUS as the inventor and argued that Dr Thaler had derived the right to the patent as successor in title by virtue of being the owner and creator of the AI inventor.

The Board found the main request to be not allowable because the designation of the inventor did not comply with Article 81 EPC. The Board pointed to the Oxford English Dictionary and Collins Dictionary of the English Language definitions of the word inventor, both of which define an inventor as a ‘person’. There was seen to be no reason to assume that the EPC uses the term in a special way departing from this meaning. When a provision of the EPC 2000 refers to or includes the inventor(s), it uses the terms person or legal predecessor (e.g., Article 60(2) EPC or Article 55(1) EPC), thus, it postulates a person with legal capacity.

The Board felt that there was thus no reason to examine the origin of the right to the European patent, as per Article 81 EPC, second sentence.

Auxiliary request

The appellant’s auxiliary request designated no inventor, instead asserting that the invention was conceived autonomously, and the first sentence of Article 81 EPC thus does not apply. The auxiliary request also included a statement, that Dr Thaler had derived the right to the European patent by virtue of being the owner and creator of the AI inventor.

The Board in fact agreed with the appellant’s argument that the first sentence of Article 81 EPC does not apply in this situation. However, the auxiliary request did not resolve the issue of ownership. Article 60(1) EPC vests the rights in the European patent to the “inventor or his successor in title” as well as deferring to national law in the case that the inventor is an employee. The Board did not agree that being the “owner and creator” of the machine brought the applicant within the rights conferred by Article 60(1) EPC, i.e. the owner and creator is neither the successor in title nor the employer of the machine – in short, a machine has no legal personality and cannot transfer any rights.

This creates a situation where the requirements of Article 81 EPC, second sentence, i.e. the statement indicating how rights are derived from the inventor, cannot be satisfied. Both requests therefore failed to meet the requirements of Article 81 EPC.

Comments

The take-home comment appears to be that a natural person inventor is necessary for the grant of a European patent. Additionally, rights conferred by inventorship cannot subsist in or be transferred from a machine.

This poses a question: should it be possible that a patentable invention within the meaning of Article 52 EPC could be conceived of purely by an AI system? Does this decision rule out patentability of such inventions?

The Board certainly did not rule out the patentability of AI generated inventions per se. Indeed, the Board actually confirmed that the scope of patentable inventions is not limited to human-made inventions, see reasons for the decision paragraph 4.6.2:

“Firstly, under Article 52(1) EPC any invention which is novel, industrially applicable and involves an inventive step is patentable. The appellant has argued that the scope of this provision is not limited to human-made inventions. The Board agrees.”

But, as it stands, designation of either a non-human inventor, or simply no inventor does not satisfy the requirements of Article 81 EPC. It is thus within the rights of the receiving section to refuse such an application. These formal requirements of Article 60(1) and 81 EPC cannot be ignored.

Whilst the Board appeared to take a firm position that formal requirements cannot be ignored, they did however appear to be amenable to a situation where no inventor was named, should none exist, thus disregarding the first sentence of Article 81 EPC. Whilst this may seem contradictory, the logic behind this position was that the purpose of this provision is to confer rights to the inventor, which is not necessary where the inventor does not exist.

Whether this situation is unjust, the Board stated that it is a task for the lawmakers to potentially amend the EPC should a problem exist, and not for the Board to propose a solution to this scenario. Nevertheless, the Board did appear to suggest that the solution is that the owner and creator of the AI system should simply designate themselves as the inventor, see reasons for the decision paragraph 4.6.6:

“The Board is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law.”

Could this be taken as an implicit suggestion that the creator and owner should just designate themselves as the inventor? Even if this approach is the only practical solution, applicants may nevertheless find this to be unsatisfactory. As the use of AI systems becomes more widespread, it seems likely that in a commercial setting the creator, the owner, and the user of the AI may be different people, leaving the rightful owner of the patent unclear. Additionally, the Board’s apparent suggestion may be incompatible with national law. For example, under US law, this could be considered to be a false statement under oath, jeopardising patentability or even risking criminal proceedings.

As the Board state that the ‘user’ could be deemed the inventor, they appear to envision that there must be some degree of human input into an AI generated invention. However, it remains unclear what level of input would be required to make someone the user. Could an action which does not involve inventive skill in of itself, such as inputting a seed value, selecting a preferred outcome, or even just clicking ‘go’, be suitable to impart inventorship onto a user of an AI system?

For now, we will have to await future decisions or changes to the EPC before having any further clarity on AI inventorship before the EPO.