Clifford Chance

The European Patent Office (EPO) Legal Board of Appeal announced its decision to dismiss the appeal in cases J 8/20 and J 9/20, confirming the EPO's Receiving Section decisions that rejected two patent applications in which an artificial intelligence (AI) system was designated as the inventor.

Background

In 2018, Mr. Stephen Thaler filed patent applications EP 18 275 163 and EP 8 275 174, the first relating to a container for beverages with a fractal shape, the second to a device for attracting attention by means of special signal sequences. In both applications, Mr. Thaler indicated, as the inventor, a machine called "DABUS" (“Device for the Autonomous Bootstrapping of Unified Sentience”) which, according to the applicant, is a type of connectionist AI from which he had acquired the right to the patent as its successor in title.

Mr. Thaler explained to the EPO that the inventions had been created entirely and autonomously by the machine, so DABUS should be recognised as the inventor and he (the applicant) – as the owner of the machine – was an assignee of any intellectual property rights created by it. The Receiving Section decided to consolidate the proceedings for the two patent applications, as the underlying facts concerning the designation of inventor were identical in both cases.

In its decisions ( EP 18 275 163 and EP 8 275 174 ) of 27 January 2020, the EPO's Receiving Section rejected both patent applications, after reaching the conclusion that the proper interpretation of the European Patent Convention (EPC) leads to the conclusion that the inventor designated in a patent application must be a natural person (human).

The EPO also pointed out that, according to Article 81 EPC_[1], European patent applications must either designate the inventor or contain a statement indicating the origin of the invention. In the latter case, Rule 19 (1) EPC_[2] prescribes that such designation must contain the family name, given names and address of the inventor.

Against this background, the Office considered that only a human being could be an inventor within the meaning of the EPC. The fact that Mr. Thaler had given a name to the machine (DABUS) did not meet the abovementioned formal requirements of Article 81 – second sentence – and Rule 19(1) EPC. The EPO stressed that the designation of the inventor is mandatory because of its legal consequences, namely, to safeguard the status of inventor by giving him or her various rights. Of course, a machine without legal capacity cannot exercise such inventor's rights.

The Office also rejected Mr. Thaler's alternative line of argument, namely that he should be recognised as the successor in title, since pursuant to Article 60(1) EPC_[3] the right to a European patent belongs to the inventor or his successor in title. The EPO considered that AI systems or machines cannot be employed or hold any rights that can be transferred or assigned to a successor in title. Hence, the argument of being the owner of DABUS could not be considered as a statement on how Mr. Thaler obtained the rights to the invention.

Both decisions were appealed before the Legal Board of Appeal (appeal numbers J 8/20 and J 9/20).

Decision

In a Press Communiqué published on 21 December 2021, the EPO's Legal Board of Appeal announced its decision to dismiss the appeal in cases J 8/20 and J 9/20, thus confirming the Receiving Section decisions of 27 January 2020.

At the end of the oral proceedings, the Legal Board of Appeal announced in voce its final decision to dismiss the appeal in both cases and gave the following conclusions as the underlying reasons therefor: (i) first, under the EPC the inventor had to be a person with legal capacity, not a machine; (ii) second, a statement indicating the origin of the right to the European patent under Article 81 – second sentence – EPC had to be in conformity with Article 60(1) EPC. The EPO considered itself competent to assess such formal requirements.

In addition, the Legal Board of Appeal also refused Mr. Thaler's request to refer the case to the Enlarged Board of Appeal, as the Legal Board did not consider it necessary, despite the novelty of the issue at stake and the global attention on the matter.

This decision is final, with Mr. Thaler having no possibility of appealing it further.

Comment

Mr. Thaler also filed patent applications designating the AI system DABUS as inventor in multiple jurisdictions other than the EPO. These patent applications had been rejected by the relevant courts and patent offices of, among others, the UK[see our articles The nail in the coffin for AI inventorship? and AI and Patents – Can AI be an inventor?], USA and Germany, on the basis that the designation of the inventor needs to relate to a human being. By contrast, an Australian court  (Thaler v Commissioner of Patents [2021] FCA 879 ) and the South African Patent Office did allow the DABUS AI system to be named as inventor.

Therefore, while we await the detailed reasoning of the Legal Board of Appeal, this decision announced in the Press Communiqué of 21 December 2021 confirms that, according to the prevailing interpretation of the European patent system framework, the status of inventor can only be attributed to humans (i.e., machines and AI systems cannot be named as inventors in patent applications).

This approach seems to be in line with the very purpose of patent law: to provide a system that attributes to the inventor a reward from society in return for the disclosure of the invention, in order to promote innovation and, ultimately, foster economic growth. In this regard, granting patents for inventions entirely devised by a machine (i.e., without human contribution in the inventive process) would not make any sense, as machines do not need incentives to generate output.

On the other hand, market players are advocating for a legislative change to adapt patent law to the new technical reality, as they understand that acknowledging AI inventorship would incentivise innovation and the disclosure of information in the Tech sector.

All in all, despite technological progress it seems that the EPO still considers Protagoras' old formula as valid. At least when it comes to patent inventorship, as things stand, humans are still the "measure of all things". In any case, given the interests at stake and the players involved, the debate on AI inventorship is not likely to be resolved anytime soon.

References

[1] Article 81 EPC: "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."

[2] Rule 19(1) EPC: "The request for grant of a European patent shall contain the designation of the inventor. However, if the applicant is not the inventor or is not the sole inventor, the designation shall be filed in a separate document. The designation shall state the family name, given names and country and place of residence of the inventor, contain the statement referred to in Article 81 and bear the signature of the applicant or his representative."

[3] Article 60(1) EPC: "The right to a European patent shall belong to the inventor or his successor in title. If the inventor is an employee, the right to a European patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has the place of business to which the employee is attached."