Paris, January 17, 2020 – After a long-awaited oral procedure, the EPO logically indicated that only natural persons could be designated as inventors in a European patent application, even if artificial intelligence algorithms were involved.
At the end of 2018, two European patent applications, EP 18 275 163 and EP 18 275 174, were filed by Stephen L. Thaler, relating respectively to a food container having a fractal shape and to devices and to methods for attracting attention based on a light signal having a fractal dimension of approximately 1.5 (the best known example being a variant of the Koch curve, the shape of which is also present in the figures of the first application as an example of a food container having a fractal shape).
But what particularly drew the attention of the general public to these two patent applications is that they both designate an artificial intelligence (AI) algorithm, “DABUS”, (for Device for the Autonomous Bootstrapping of Unified Sentience), so-named by its creator, Stephen L. Thaler, as an inventor.
Beyond the marketing maneuver, this initiative was aimed, according to members of The Artificial Inventor Project (a research group on the subject of inventions made by AI algorithms which supported the defense of patent applications filed before various offices), to raise the question of the authorship of inventions by AI and to push offices to further develop their legislations. Similar patent applications have also been filed with other patent offices, including the United Stated and the United Kingdom.
If, of course, the first question that comes to mind is that of the capability of AI to actually invent independently, and therefore of the honesty of such an inventor designation, the European Patent Office has scrupulously confined itself to studying its legality, in accordance with Rule 19(2) EPC which provides that “[t]he European Patent Office shall not verify the accuracy of the designation of the inventor”.
Thus, following this designation of inventor, the EPO Receiving Section in charge of the formal examination of these two patent applications summoned the Applicant to oral proceedings in Munich, on November 25, 2019, on the grounds that the filed designation of inventors did not comply with the provisions of Article 81 and Rule 19 EPC: Rule 19(1) EPC namely provides that the designation of the inventor “shall state the family name, given names and full address of the inventor”, which is only possible for a subject of law (having a legal personality), de facto excluding a machine.
The EPO supported their argument by referring to the “Travaux Préparatoires” (preparatory works) for the EPC 1973, which highlighted the fundamental principles according to which the European patent right belongs to the inventor or his successor in title (Article 60 EPC) and the inventor has a moral right to be designated as such (Article 62 EPC): only a natural person has both a moral right and a right of ownership.
Even if a machine could have an ownership right over the invention, it would also have to have the legal capacity to transmit it to the Applicant by employment contract or inheritance.
In addition, the EPO recalls that the “Travaux Préparatoires” repeatedly use the word “person” for the inventor, see also Rule 21 EPC and J 7/99 and J 8/82.
In response, the Applicant argued that there was no express legal provision that an AI should not be recognized as an inventor or that the inventor should specifically be a person, while, on the other hand, there exists a moral obligation to identify the real inventor.
They further added that even if AIs do not have a first or last name, the same applies to certain categories of people and that it would not be correct to deny these persons the right to be appointed as an inventor for this reason.It should be noted that the Applicant remains aware of the fragility of their position, as they have long invoked the need for an evolution of the law in favor of the recognition of AI inventors to follow current technological developments.During oral proceedings, these arguments were repeated, and after a short deliberation the President of the Receiving Section announced, as could be expected, the rejection of the two patent applications on the basis of a deficiency in the designation of the inventor.
The EPO has not yet published the corresponding written decision, but it should be provided in the coming days. It should be noted that this is a first instance decision, and thus subject to appeal.
The matter is therefore to be followed; we will keep you informed.
