The Legal Board of Appeal of the European Patent Office (EPO) has affirmed the decision of the Receiving Section that a patent application cannot succeed where the designated inventor is not a person, but an Artificial Intelligence (AI) machine. An auxiliary request had also been made indicating that a natural person was to have "the right to the European Patent by virtue of being the owner and creator of" the artificial intelligence system DABUS. This did not meet the provisions of the European Patent Convention (EPC) either.
The patent application is a test case that has been tried across the world, the updated overview of which can be gleaned in our previous report (see the 'What is happening around the world?' section of the article). The main issue before all of the tribunals was whether the patent system permits the naming of an AI system as inventor or not. It was assumed that the invention was devised entirely autonomously by the AI machine.
The Receiving Section of the EPO (which deals with formality requirements of patent applications) had previously held that the inventor had to be a natural person and that the applicant, the owner and creator of DABUS, had failed to show that he had validly acquired the right to the patent from DABUS because a machine is not capable of transferring any rights. In its grounds of appeal, the applicant argued among other things, the following points:
- The EPC was drafted at a time when the AI systems were not contemplated to be capable of inventing. Accordingly, EPC does not state that patents should not be granted to an invention made by anything other than a person. That does not mean that the EPC excludes or is intended to exclude the granting of patents to inventions made by AI systems.
- EPO is bound by Protocol on Jurisdiction and the Recognition of Decisions in respect of the right to the grant of a European patent, meaning that the contracting states shall have jurisdiction to decide on the right to the grant of a European patent. There is no consensus understanding among the contract states on the issues of whether anything other than a person can be an inventor of a patent. Therefore it was not EPO's place to decide the issue.
- Other international conventions may be interpreted to say that a granting of a patent must not be precluded purely because the invention which is subject of the patent application, is AI generated. For example:
- Article 27(1) of TRIPS states that "patents shall be available for any inventions, whether products or processes, in all fields of technology…"
- Article 1 of Strasbourg Convention (Convention on the Unification of Certain Points of Substantive Law on Patents for Inventions) states that "patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step…".
- Inventorship is a matter of fact and not a right. Nowhere in the EPC does it say that the inventor must have legal or moral rights.
- The Receiving Office's decision, to the extent that it may be interpreted to suggest that a natural person should be designated even if that person is not the actual devisor, would encourage the submission of information which is not true, and so cannot be correct. Further, it weakens moral justifications for patents by among other things, diminishing the meaning of inventorship, and the public's moral right to know who devised the invention.
- The Receiving Section appears to have accepted that the owner of an AI system may, in accordance with national law, own the output of that machine.
Relevant European Patent Convention provisions
The pertinent parts of the relevant EPC provisions and rules for the appeal hearing, Articles 81, 60(1) and Rule 19(1), are copied below:
Article 81: Designation of the inventor
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.
Article 60(1): Right to a European patent
The right to a European patent shall belong to the inventor or his successor in title...
Rule 19(1): Designation of the inventor
The request for grant of a European patent shall contain the designation of the inventor…
The Legal Board of Appeal held that the patent application could not succeed because it did not comply with the relevant provisions identified above, holding that the designated inventor had to be a person with legal capacity and that the applicant had not established that it was a successor in title in accordance with Article 60(1).
The responses to the grounds of appeal advanced before the EPO are inevitably not reflected in the EPO's short press release. We look forward to understanding what the EPO has had to say to the applicant's arguments as outlined above, as well as its detailed reasoning for the decision.
If you have any questions, please contact Seiko Hidaka.