The European Patent Office (‘EPO’) has published its reasons for rejecting two patent applications on the grounds that an AI system known as DABUS, rather than a human, was named as the inventor.
These patent applications appear to have been filed as a “test case” as part of the Artificial Inventor Project, which is seeking intellectual property rights for the output of artificially intelligent machines. This is the first skirmish as part of a campaign to recognise the output of AI, not least given the substantial role AI now plays in innovation and selection of inventions.
The patent applications had previously been rejected by both the UK and US patent offices on similar grounds: whilst the novelty and inventive step requirements appeared to have been fulfilled, the fact that an AI, and not a human, had been named as the inventor, was a bar to patentability. Indeed, the UK Intellectual Property Office has now issued updated guidance to the effect that any patent application which names an AI as the inventor will not be accepted, as the inventor must be “a person” and this is “required by law”.
Whilst it is unlikely that AI inventorship will be recognised by patent offices in the immediate term, it is interesting to note that the EPO observed that AI systems “at present” have no rights, and that “no … law has [yet] been determined which would recognise… an AI… as an inventor”. The EPO did not go so far as to say that it would be impossible for any AI to be recognised as an inventor in the future.
In late 2018, an individual named Stephen Thaler filed two European patent applications (EP 18 275 163, for a food container, and EP 18 275 174, for a search and rescue beacon).
Dr. Thaler failed to designate the inventor on both applications, in contravention of Article 81 and Rule 19(1) of the European Patent Convention (‘EPC’). Having been asked to remedy this deficiency, the applicant filed a separate designation of inventorship indicating that the inventor for both applications was a machine referred to as DABUS.
DABUS was characterised as a “type of connectionist artificial intelligence”. Put simply, it uses a system of multiple neural networks to generate new ideas, the novelty of which is then assessed by a second system of neural networks.
Dr. Thaler claimed that DABUS had “identified the novelty of its own idea[s] before a natural person did”, and that as the owner of DABUS, Dr. Thaler had acquired the right to the patent as DABUS’ “employer”, or alternatively, as DABUS’ successor in title.
Can a machine be named as inventor?
The EPO informed the applicant that the designation of inventorship which had been filed did not meet the requirements of Article 81 and Rule 19(1) EPC, which, according to the EPO, required designations of inventorship to contain ““a family name, given names and full address of the inventor who must be a natural person”.
In response, Dr. Thaler pointed out that Article 81 and Rule 19(1) do not expressly require the inventor to be a natural person. The provisions merely require that the inventor is properly identified as “the actual deviser of the invention” (per section 7(3) of the UK Patents Act 1977). Indeed, naming another person as the inventor would be a breach of the EPC.
Whilst Dr Thaler accepted that machines could not own patents nor enjoy moral rights, “since machines have no rights”, he argued that this was not a reason to deny inventorship them.
Dr Thaler further argued that identifying machines as inventors would protect the moral rights of human inventors and recognise the work of the machines’ creators, and failing to do so would both frustrate the purpose of the EPC and disincentivise innovation.
Combined oral proceedings for both patent applications took place in November 2019, following which the EPO refused the applications on the basis that designating a machine as the inventor did not meet the formal requirements under the EPC.
The EPO’s reasons were as follows:
- The inventor named must be a natural person. As the EPC only provides for natural and legal persons to file a patent application (Article 58), the EPO effectively read-in a natural person requirement into Article 81 and Rule 19(1). The EPO asserted that this concept was reflected in the legislative history of the EPC, referring to the Travaux Prépatoires (working papers) in which (according to the EPO) the possibility of recognising legal persons as inventors was discussed, but ultimately not included in the final draft. The EPO further stated that the laws of some jurisdictions explicitly define the inventor as being the natural person who creates an invention, and “no national law has been determined which would recognise [a machine] as an inventor”.
- Naming a machine as the inventor did not meet the requirements because names given to things were not of equal status to names of natural persons. The EPO asserted that names for natural persons are used not just to identify them, but to “exercise rights and “form part of [their] personality”, concepts which do not apply to machines.
- Inventors have rights (including the right to be named on patent applications) per Article 62 EPC, but machines have “at present no rights because they have no legal personality comparable to natural or legal persons”. The EPO distinguished machines from legal persons as there “is no legislation or jurisprudence establishing such a legal fiction”.
- Where the applicant for a patent is not the inventor, the designation of inventorship must contain a statement indicating the origin of the applicant’s right to the patent. Dr Thaler had no rights by virtue of being DABUS’ employer or successor in title, because machines can be neither employed nor hold any rights (and as such cannot transfer any rights to a successor in title).
As Dr Thaler did not express any intention to name himself as the inventor on the applications, the matter was closed. The applicant may bring an appeal within two months.