EPO: AI cannot be a designated inventor under the European Patent Convention

Written by Samuel O’Toole | January 30, 2022

Patents

On 21 December 2021, the Legal Board of Appeal of the European Patent Office (EPO) announced its decision in appeals J 8/20 and J 9/20 to refuse two patent applications in which an AI system, DABUS, was designated as inventor on the application.

DABUS was created by Stephen Thaler and is an AI system that has created two inventions which are the subject of EPO application numbers EP 18 275 163 and EP 18 275 174. DABUS has been designated as an inventor of similar applications across the world and has had some success, for example in South Africa under number ZA2021/03242 (see https://artificialinventor.com/patent-applications/).

Under Article 81 of the European Patent Convention the applicant of a patent must designate an inventor. The current proceedings called into question whether an inventor can be an AI machine which doesn’t have legal capacity (eg as it is not a person or a company). The EPO initially rejected both applications owing to the inventor issue. This decision was then appealed by Thaler in early March 2020, the EPO’s Board of Appeal issued a preliminary view in June 2021 in which the appeal was rejected.

Now, the oral proceedings which are apart of the Board of Appeal’s decision making process having concluded, it appears that Thaler’s attempts to persuade the EPO that DABUS can be a designated inventor on a patent application have failed. A full written decision will be issued shortly by the EPO.

It’s also worth noting that in the UK, DABUS has followed a similar fate. The UK Intellectual Property Office (UKIPO) rejected Thale’s two patent applications on the basis of DABUS being the designated inventor. The Patents Court upheld the decision of the UKIPO hearing office and Thaler’s appeal to the Court of Appeal was similarity unsuccessful (although Lord Justice Birss gave a dissenting decision and found Thaler’s applications had met the relevant requirements).

Written by Sam O’Toole – Associate

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