Further to our earlier publication (https://www.aathornton.com/court-of-appeal-dabus-case/) reporting a UK Court of Appeal decision concerning the naming of an AI system DABUS as an inventor for a patent application, the European Patent Office (EPO) has now issued a decision on the corresponding European applications.

The headline

On 21st December 2021, the Legal Board of Appeal at the EPO announced its decision to dismiss the appeal in cases J 8/20 and J 9/20, therefore refusing applications EP 18 275 163 and EP 18 275 174, for which an artificial intelligence system was designated as inventor.

The background

The European Patent Convention (EPC) specifies the designation of an inventor as a formal requirement which must be fulfilled under Article 81 EPC and Rule 19(1) EPC. Article 60(1) EPC further specifies that the right to a European patent shall belong to the inventor or his successor in title.

Questions arose in cases J 8/20 and J 9/20 as to whether an applicant can designate as inventor an AI machine which does not have legal capacity.

Both applications were originally refused by the Receiving Section of the EPO because the designation submitted by the applicant was considered not to be consistent with Article 81 EPC for two reasons:

(1) it was concluded that only a human inventor can be an inventor within the meaning of the EPC; designating a machine as an inventor was not seen to comply with the requirements set out in Article 81 EPC and Rule 19(1) EPC; and

(2) the Receiving Section considered that a machine cannot transfer rights to the applicant and therefore concluded that the statement that the applicant was the inventor’s successor in title because they owned the machine did not satisfy Article 81 EPC in conjunction with Article 60(1) EPC.

Opinion of the Legal Board of Appeal at the EPO

The Legal Board of Appeal dismissed the appeal confirming:

  • the inventor has to be a person with legal capacity, and hence the naming of a machine as inventor was not allowable;
  • a statement indicating the origin of the right to a European patent had to be in conformity with Article 60(1) EPC. Thus, the Board refused an auxiliary request according to which no person had been identified as an inventor but a natural person was merely indicated to have the right to a European patent by virtue of being the owner and creator of the AI system; and
  • the EPO was competent to assess whether such statement referred to a situation covered by Article 60(1) EPC.

The written decision with more detail will be publicly available in due course.

Conclusion

This is an unsurprising confirmation of the EPO’s understanding of the current law, and does not tell us whether or how the law should develop in future. Questions regarding inventorship and patentability of inventions that benefitted from use of an AI system will continue to be discussed for some time. For example, the UKIPO’s consultation on AI and IP remains open until 7 January 2022. AA Thornton is contributing to CIPA’s response to the UKIPO consultation and advising many clients on AI patentability issues.