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Article 16 Aug 2022

No patent rights for DABUS

Fortunately or unfortunately, depending which side you were rooting for, the artificial intelligence system ‘DABUS’ will not be named as the inventor of a European patent application. This was the decision of the Board of Appeal of the European Patent Office given at the end of the previous year. Recently, the Board of Appeal issued the reasons for this decision.

To summarise the case, the applicant designated DABUS as a sole inventor of a patent application, adding that the invention was autonomously generated by that artificial intelligence. The applicant stated in the designation that he had acquired the right to the patent as employer and subsequently submitted a form stating that he derived the right to the patent as successor in title.  The Receiving Section of EPO summoned the applicant to oral proceedings where it decided to refuse the patent application in question due to failure to comply with Article 81 and Rule 19 EPC, which would require that the designated inventor is a natural person.

Legal rights and artificial intelligence  

The applicant appealed. However, the Board of Appeal of EPO confirmed the decision of the Receiving Section. This decision was expected as the European Patent Convention (EPC) and, more generally, the European legal framework simply were not designed for granting rights to a machine. This is in essence what this case was about – giving legal rights to an artificial intelligence.

In the appeal, the appellant (previously, the applicant) argued that the EPO should not and cannot examine the designation of the inventor. According to the appellant, the designation is only a formal matter. And indeed, the EPO does not have mechanisms in place to check whether the listed inventors are true inventors of the invention in question or not. If the applicant, for example, had named John Doe as the inventor, the Receiving Section of the EPO probably wouldn’t raise any objection. Inventorship disputes are a matter for national courts to decide.


Right to the European patent   

However, the Board was of a different opinion. In motivating their decision, the Board referred to Articles 60 (1) and 81 EPC. Article 60 (1) EPC states that the right to a European patent shall belong to the inventor or his successor in title. Article 81 EPC states that the European patent application shall designate the inventor. The article further states that 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) EPC vests the right to a European patent. By default, this right belongs to the inventor. Thus, the inventor has to be a person with a legal capacity in order to accept this right. In defining the “successor in title”, the Board cites Article 31(1) of the Vienna Convention on the Law of Treaties (VCLT) where this term refers to a situation where a pre-existing right goes from one subject into the sphere of another. In regard to Article 60 (1) EPC, the inventor can transfer his/her right regarding a patent to another subject. Thus, in both cases the inventor has to be a person with a legal capacity in order to comply with provisions of Article 60 (1) EPC.

The designation of the inventor as required by Article 81 EPC has to comply with the EPC, in particular the provisions of Article 60 (1) EPC. The Board agrees with the appellant that the EPO cannot check the correctness of the designated inventors. However, the Board states that the Receiving Section must check whether the designation complies with the EPC. In the present case, this is not satisfied as the designated inventor is not a person with a legal capacity and therefore, the provisions of Article 81 in conjunction with Article 60(1) EPC are not fulfilled.

The main purpose of the designation is to protect rights of the inventors

Legal purpose  

The Board concludes that designating a machine without legal capacity as an inventor can serve no (legally) useful purpose. I must agree with this point of view of the Board. The main purpose of the designation is to protect rights of the inventors. Giving rights to a machine is useless. DABUS certainly would not benefit from having them or be able to enforce them or transfer them.  The same is valid for the applicant. There are no benefits in naming the machine as an inventor. Except if DABUS, unhappy with this outcome, decides to stop inventing in protest. Until then, this matter has been settled.

It’s also worth mentioning that the same outcome for DABUS has been confirmed by the US Court of Appeals, the UK Court of Appeal, the German Federal Patent Court, and the Australian Federal Court.

Decision of the Board of Appeal

Relevant articles of the EPC:

Article 81. 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) 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.

Rule 19(1) 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.

(2) The European Patent Office shall not verify the accuracy of the designation of the inventor.

 

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