PatentNext Summary: The Legal Board of Appeal (the “Board”) of the European Patent Office (EPO) recently suggested that the owner of an artificial intelligence (AI) machine could possibly be listed as an inventor of an AI-generated Invention. This suggestion arguably opens the door for companies or individuals, who own or use AI-generating machines, to designate themselves (instead of the AI machine) as the “inventor” on a patent application, even where the invention was wholly conceived by the AI machine itself.
The Legal Board of Appeal (the “Board”) of the European Patent Office (EPO) recently suggested that the owner of an artificial intelligence (AI) machine could possibly be designated as an inventor of an AI-generated Invention. In particular, the Board suggested that:
“The Board is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law.”
J 8/20 (Designation of inventor/DABAS) at para. 4.6.6
The suggestion came as part of the Board’s written reasons for its decision in EPO case J 8/20. The Board issued the written reasons on July 6, 2022, as part of a press communication.
This suggestion arguably opens the door for companies or individuals, who make or use AI-generating machines, to list themselves (instead of the AI machine) as the “inventor” on an EPO patent application, even where the invention was wholly conceived by the AI machine itself.
By way of background, during oral proceedings on December 21, 2021, the Board had refused the related EPO application (EP 18 275 163), in which an artificial intelligence system named DABUS (the “Device for the Autonomous Bootingstraiming of Unified Sentience”) was designated as the sole inventor.
The applicant had designated DABUS as the sole inventor because, according to the applicant, DABUS had autonomously created the disclosed invention.
In particular, the applicant had argued that DABUS was rightfully listed as the sole inventor because DABUS had fulfilled Article 52(1) EPC, which states that any invention that is novel, industrially applicable, and involves an inventive step is patentable. The Board agreed with the applicant’s argument that DABUS could satisfy Article 52(1) and that “[h]ow the invention was made apparently plays no role in the European patent system.”
However, the Board also focused on the issue of whether an AI machine is a person with legal capacity. The Board found that DABUS did not meet this requirement. This is because the designation of the inventor is a formal requirement that a patent applicant must fulfill according to Article 81 and Rule 19(1) EPC. Under Article 81 EPC an applicant must designate an “inventor.” And, according to the Board, an inventor has to be a “person.” The Board provided a dictionary definition of “person,” stating that ‘[i]t is the ordinary meaning of the term inventor (see, for instance, Oxford Dictionary of English: a person who invented a particular process or device or who invents things as an occupation.’”
According to the Board, there is no reason to assume that the EPC uses the term “person” in a special way. In addition, the Board identified that provisions of the EPC that commonly refer to an “inventor” also refer, at the same time, to a “person” or “legal predecessor.” Moreover, Article 60(1) EPC vests the rights to the European patent in the inventor. Thus, according to the Board, the EPC “postulates a person with legal capacity.”
Under this context, the Board found that DABUS was not a “person” (as required by Article 81 EPC) because DABUS had no legal capacity. Thus, the application listing DABUS as the sole inventor was not allowable.
Based on the Board’s statements, it remains clear (at least for now) that an AI machine cannot be listed as an “inventor” because current-day AI machines cannot be considered a “person” as it is commonly understood. Perhaps in the future, if an AI machine obtains “legal capacity,” this threshold can be overcome.
For now, the Board’s ruling corresponds to most other worldwide rulings that address whether an AI machine (e.g, DABUS) can be an inventor. That is, most conclude that an AI machine cannot be an “inventor” because an AI machine is not a “person” (i.e., a human) as contemplated by respective worldwide laws.
Time will tell whether a future applicant will list an owner or user of an AI machine as the “inventor.” If it happens, then the EPO’s decision, and related suggestion, will likely be cited.
For more on AI-Inventorship, check out PatentNext’s article that tracks AI inventorship as it plays out in various jurisdictions worldwide. See Can an Artificial Intelligence (AI) be an Inventor?
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