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AI Inventorship receives setback at the EPO

AI Inventorship receives setback at the EPO

01/08/22

The Boards of Appeal have published their decision to dismiss the Appeal of Thaler against the decision to refuse an application due to an AI system’s (DABUS) designation as inventor.

The decision is the latest in a line of cases brought about by the inventions autonomously developed by the AI system DABUS and patent applications filed for those inventions by DABUS’s owner, Dr Thaler.

The appeal was filed by Dr Thaler in response to a decision to refuse two applications (EP18275163, EP18275174) for failing to designate an Inventor. The Receiving Section refused the decision for two reasons:


1) the requirements of Article 81 and Rule 19 EPC were not met in that the designated inventor was not a natural person; and
2) the requirements of Articles 60(1) and 81 EPC were not met because the inventor is designated as a machine with no legal personality, Dr Thaler could not have acquired a right to the application.

The Appellant presented a number of arguments generally either disputing the interpretation of the relevant provisions of the EPC and other treaties or seeking to illustrate incompatibilities with the interpretation and public policy considerations in light of advancing technology.

The Board evaluated the arguments presented and decided that three relevant questions had been raised:


1) Can an applicant designate an entity which is not a natural person as the inventor and satisfy Article 81 EPC?
2) Does the filing of any declaration of inventorship irrespective of content by the applicant satisfy the requirements of Article 81 EPC?
3) To what extent can the EPO examine and object to statements filed under Article 81?

In the decision, the Board set out their interpretation of the relevant provisions referred to in the decision of the Receiving Section.

Article 81 & Rule 20 EPC
The Board consider that from the text of these passages it is clear that the designation of the inventor is a mandatory requirement of the application. It is further required that the ‘origin of the right to the European patent’ is determined. The Board take the view that this is clearly not a generic explanation of why the applicant is entitled when they are not the inventor, but instead establishes a direct link to Article 60 EPC which defines the right to a European patent.


It is further noted in the assessment of the main request that using normal interpretation of the word ‘inventor’ brings the requirement for a person into the EPC. This is because there is no reason to expect that the EPC refers to any other definition of an inventor than a human person.

Article 60 EPC
The Board consider that this provision is stand-alone and fulfils three functions:


- It establishes a right to a European Patent;
- It vests the right in the inventor; and
- It provides for the separate transferability of the right.


Specifically, the provision identifies that one must either be the inventor, or their successor in title, to acquire the right to the European Patent. Therefore, the Board considers that the EPC sets out two specific exhaustive instances in which a legal person obtains the right to the invention. The meaning of ‘successor in title’ is taken to have its normal meaning under the Vienna Convention on the Law on Treaties. Therefore, this provision can not be taken to be devoid of any substance apart from reference to the relevant national laws of the contracting states (as had been argued by the Appellant), but instead imposes necessary restrictions in the use of the terms ‘applicant’ and ‘inventor’.


The Board further noted that in such instances where the courts decide on entitlement of European patents they must do so by application of Article 60(1) EPC, and not by application of national law (where conflicts arise).

The First Question
As set out above in the analysis of the legal provisions, it is clear that the Board consider that an inventor must be a person and cannot be a non-human entity. Therefore, although an Applicant may complete the designation of inventorship form with an entity that is not a natural person the requirements of Article 81 EPC are not fulfilled.

The Second Question
Following from the answer to the first question and the analysis of Article 81 EPC, the Board consider that the normative link between Article 81 EPC and Article 60 EPC determines that any such declaration must ‘indicate the origin of the right to the European patent’. As the inventor is not a person, they cannot have rights, and so no such right can be indicated by a form designating a non-human entity as inventor. Therefore, a substantive requirement exists in the assessment of the declaration of inventorship not merely an formal requirement as suggested by the Appellant.

The Third Question
The Board note that although the EPC explicitly states in Rule 19(2) EPC that ‘[t]he EPO shall not verify the accuracy of the designation of the inventor’, Article 90(3) EPC states that ‘the European Patent Office shall examine […] whether the requirements in Article 14, 78 and 81 […] have been satisfied’. Therefore, although the EPO should not assess whether the applicant is entitled to the invention, they instead ensure that a declaration identifies an inventor in the meaning of the EPC. That is to say, the EPO need not check if the right proprietor is identified, merely that the inventor is in fact an inventor in the meaning of the EPC.

In light of the above, the Board dismissed the appeal.

This decision is consistent with the approaches of the UK IPO and UK Court of Appeal which both set out that the law as written restricts inventorship to a natural person. It is worth noting that this decision is in keeping with the findings of Naruto v David Slater et al (aka the ‘Monkey Selfie’ case) in the USA, where the court found that animals cannot hold intellectual property rights.

The view that an inventor must be a person was not initially supported in Australia, where in a similar case involving DABUS the court found that it was not necessary that the inventor be capable of having rights, and furthermore that ownership of the inventor could give a natural person the rights which were created by the inventor. The appropriate section of the Australian law, unlike the EPC or UK PA 1977, does not restrict transfer of rights to assignment or succession. However, on appeal the Australian courts decided that the inventor must be a human, on the basis that the ‘origin of entitlement to the grant of a patent lies in human endeavour’.

It would seem that there is a consistent approach that a machine, monkey or other non-human entity cannot be a natural person and/or cannot possess rights. As the situation develops in further jurisdictions it will be interesting to see if any further courts decide that the inventor themselves need not be capable of possessing rights in order to be an inventor.

Addendum – US Court of Appeals for the Federal Circuit 05 August 2022
The US Court of Appeals has decided to refuse an appeal filed by Dr Thaler against the US PTO decision to refuse patent applications 16/524,350 and 16/524,532 because the inventor is listed as DABUS, not a natural person. The Court took a straightforward approach to assessing the issue, noting that the law states that the inventor must be an ‘individual’ and that individual must be interpreted normally. As the Court consider that there is no possible normal meaning of individual in the context of an inventor other than that of a human being, an inventor must necessarily be a natural person or human.

The decision follows a line of reasoning similar to the Australian decision on appeal, in that an inventor must be a human within the meaning of the law. It differs from the UK and EPO approach of assessing the rights of an inventor and whether or not it is necessary that the inventor be capable of having rights.

© WP Thompson Limited. Author: Rupert Mellor