On 17 October 2018 and on 7 November 2018 Stephen Thaler filed two European patent applications with the European Patent Office (EPO) – the first one, EP 18 275 163, concerning a Food Container and the second one, EP 18 275 174, relating to Devices and Methods for Attracting Enhanced Attention. Neither application designated an inventor and in both cases this caused the EPO to send a communication inviting Mr. Thaler to submit an inventor designation.
Mr. Thaler responded on 24 July 2019 by filing two EPO Forms 1002 in which Mr. Thaler indicated DABUS as inventor, with the comment that the invention was autonomously generated by an artificial intelligence (AI).
Furthermore, he stated that he had acquired the right to the patent as the machine’s owner, as the assignee of any such patents or better – as further specified by Mr. Thaler – the successor in title, namely the owner of the AI inventor.
In its decisions sent to Mr. Thaler on 27 January 2020 (and after the oral proceedings which took place on 25 November 2019), the EPO refused the applications finding that a) a designation indicating a machine as inventor did not meet the requirements of Article 81 and Rule 19(1) of the European Patent Convention (EPC), because an inventor within the meaning of the EPC must be a natural person; b) the statement indicating that the applicant acquired the right to the European patent from DABUS as employer, and the correction of this statement to indicate succession in title did not meet the requirements of Articles 60(1) and 81 EPC, because a machine has no legal personality and therefore, can neither be an employee of the applicant (Mr. Thaler) nor transfer any right to him.
Mr. Thaler appealed against both decisions.
We will focus here on the decision in case J 8/20, the first of the two appeals, concerning application EP 18 275 163.
The EPO’s Board of Appeal (BoA) held that the designation of the inventor in the application did not comply with EPC, which stipulates that the designated inventor must be a person with legal capacity. This is not merely an assumption on which the EPC was drafted, but is indeed the ordinary meaning of the term “inventor” (i.e., Oxford Dictionary of English: “a person who invented a particular process or device or who invents things as an occupation”; Collins Dictionary of the English language: “a person who invents, esp. as a profession”).
The BoA’s decision states that there is no reason to assume that the EPC uses the term in a special way, departing from its ordinary meaning, and there is no lexical or contextual ambiguity which the BoA needs to dispel.
The decision points out also that The purpose of the provisions dealing with the inventor and its designation is primarily to confer and to protect rights of the inventor (J 8/82, Reasons, points 12-13), to facilitate the enforcement of potential compensation claims provided under domestic law, and to identify a legal basis for entitlement to the application (on this see also the EPO President’s comments, points 5-9). Designating a machine without legal capacity can serve neither of these purposes.
Furthermore, the BoA found that the auxiliary request, in which Mr. Thaler claimed the right to the European patent as owner and creator of the machine, did not refer to a legal situation or transaction which would have made him successor in title of an inventor within the meaning of the EPC; for this reason, the auxiliary request did not comply with EPC’s Article 81, second sentence, in conjunction with Article 60(1), and was therefore not allowable.
Further issues are addressed in the decision, but the above findings seem to be the most interesting.
In our view, even if the recognition of an AI system as an inventor – as is also apparent from the BoA’s decision – is not an issue of immediate concern, the debate on the issue of inventorship of AI-generated inventions carries importance.
Indeed, while at the moment there is no clear evidence that AI can independently and autonomously invent and create, it cannot be ruled out that technological progress might change that in the future.