03 August, 2022

The EPO Are Not 'Board' of AI Yet - EPO Board of Appeal Weighs in on Whether Artificial Intelligence Can Be an Inventor

The progression of AI in the world of IP rights keeps trundling along, with many national and international bodies having already weighed in on whether AI can be an inventor for the purpose of patent law or not (discussed on this blog before). The answer seems to have been a resounding "no", however, following an earlier decision by the EPO, the EPO Board of Appeal has now issued its decision in the ever-continuing DABUS saga, which does shed some further light on the matter and does show that the current legislative framework does seem robust enough on the matter of AI (though this writer would think that specific legislative updates are still a must).

The case of Designation of inventor/DABUS (case J 0008/20) concerned two patent applications filed at the EPO (namely EP18275163 and EP18275174). The applications didn't list an inventor for the patents, but, following a clarification by the applicant, Stephen Thaler, the inventor was noted to be "DABUS". DABUS is an AI created by Mr Thaler. The EPO Receiving Section rejected both applications on the grounds that the designated inventor, DABUS, didn't meet the requirements for an inventor, that being a need for them to be a 'natural person'. Mr Thaler subsequently appealed both decisions to the Board of Appeal.

The appeal was brought on three separate grounds: (i) whether an applicant can designate an entity which is not a natural person as the inventor under Article 81 of the European Patent Convention; (ii) to comply with the EPC is it enough for an applicant to file any declaration irrespective of its content, or does the latter need to satisfy specific requirements; and (iii) whether and to what extent the EPO can examine and object to statements filed under Article 81.

To set the scene, Article 81 requires that an inventor be designated for all patent applications, and any deficient designation of an inventor can be amended under Rule 21 of the EPC. Further, Article 61 of the EPC notes that "[t]he right to a European patent shall belong to the inventor or his successor in title" (the latter being a legal successor in the title of the rights), and the rights of any employee, if they are the inventor, will be determined by the national legislation where they are employed. 

The Board of Appeal first dealt with the main request in the matter, i.e. whether an AI can be an inventor of a patent. The Board firmly rejected this point, as they determined that "[u]nder the EPC the designated inventor has to be a person with legal capacity", so adopting a simpler, ordinary meaning approach in deciding what an 'inventor' is. What the provisions around designating an inventor seek to do are to confer and protect the rights of the inventor, facilitate the enforcement of potential compensation claims provided under domestic law, and identify a legal basis for entitlement to the application. The Board clearly set out that "[d]esignating a machine without legal capacity can serve neither of these purposes"

The Board also noted that there is no practice or agreement that would allow for the Board to overcome this specific language. The appellant also advanced an argument of fairness allowing for AI to be an inventor of a patent; however, the Board immediately rejected this argument as well. 

The Board therefore confirmed that the Receiving Section's decision was correct in raising an objection to the applications. 

In summarizing its position, the Board decided that "…the main request does not comply with the EPC, because a machine is not an inventor within the meaning of the EPC. For this reason alone it is not allowable"

The Board then turned to the auxiliary request, i.e. whether the first sentence of Article 81 does not apply where the application does not relate to a human-made invention. The Board swiftly sided with the request and agreed that the part of Article 81 would not apply in that instance, since the provisions were drafted to confer specific rights on the inventor, so where no human inventor can be identified, then Article 81 does not apply. 

The appellant had provided a statement with this request noting that they had derived the right to the European patent as owner and creator of the machine. The Board disagreed and stated that the statement didn't bring them within the remit of Article 60, since there is no legal situation or transaction which would have made him successor in title of an inventor. 

The Board did consider two referrals that were requested to be made to the Enlarged Board, however, the referrals were rejected. 

In discussing why no referral was needed, the Board turned to matters surrounding Article 52 of the EPC, which specifies that an invention is one which is novel, industrially applicable and involves an inventive step is patentable. The appellant argued that the provision only relates to human-made inventions, and the Board agreed with this position. How a particular invention was made doesn't play a part in the patent system, so therefore it is possible that AI-generated inventions too are patentable under Article 52. However, this position can't co-exist with Article 60, so you would have inventions that are patentable under Article 52, but for which no rights are provided under Article 60. 

The Board also considered the requirement to file a statement of origin of the right to a European patent where the inventor and the applicant differ. The Board noted that this is only a formal requirement, and only informs the public of the origin of the right, but that it would be disproportionate to deny protection to patentable subject-matter for failing to fulfil such a formal requirement. 

Additionally, they noted that, as the lawmakers only had human-made inventions in mind when drafting Article 60, so it is possible that no statement on the origin of the right is required where the application concerns an invention developed by a machine. 

The crux of why Mr Thaler's applications have failed in light of the above is that there is nothing preventing him from listing himself as the inventor in relation to both applications. The Board highlighted that there is no 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".

The decision is yet another among many that highlight the issues of AI inventorship and why there is simply a need for evolution in the law to accommodate AI inventions somehow. However, as noted by the Board, the creator of the AI could be listed as the inventor, bypassing this issue, however, it seems that Mr Thaler was deadset on setting a new precedent and allowing for direct ownership by the AI systems. This presents the problem of enforcement and/or remuneration, and undoubtedly these would be handled by the creator themselves, rendering this problem almost moot in this writer's view. We will see if the case progresses to the Enlarged Board, but it seems that Mr Thaler is in no way done with the DABUS saga as things stand. 

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