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The AI Entity DABUS as an Inventor: EPO Legal Board of Appeal Decision

A Dr. Thaler has filed patent applications in various jurisdictions in which an Artificial Intelligence system called DABUS has been named as the inventor. DABUS is claimed to be autonomously able to design technical solutions to problems and then select workable and potentially patentable solutions from them. This has been much-hyped as a case that “breaks the patent system,” but the reality may be rather different.

In the European Patent Office, the interpretation of the legal framework of the European Patent Convention led to the conclusion that the inventor designated on a European Patent application must be a natural person. The application was therefore refused on the basis that the designation of the inventor was deficient under the EPC and the relevant Rules, and that the ensuing designation of the applicant was therefore also invalid because the machine could not properly be an employee of, or transfer rights to, Dr. Thaler, the applicant.

This decision to refuse was appealed and a hearing before the EPO Boards of Appeal was held. The Board upheld the decision to refuse the patent application on the same basis, that under A81 EPC (first sentence) an inventor must be a natural person.

On appeal, the applicant’s representatives argued that requiring the inventor to be a natural person was a result of a lack of foreknowledge about AI at the time of the drafting of the EPC, that the designation of the inventor was a mere formal matter, that determination of inventorship was a matter of national law to which the EPO should defer, and that it was wrong to refuse the application on that ground.

The Board stated that the EPC limiting the term “inventor” to persons with legal capacity was not merely an assumption on which the EPC was drafted, but was based clearly and unambiguously on normal use of language and required no further interpretation, recourse to context, or references to national laws.

The applicant’s representatives also submitted that Dr. Thaler, as the owner and creator of the DABUS system, was entitled to be the applicant. The Board stated that this is not 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 designation of the applicant is not allowable on the basis adduced by the applicant’s representatives.

The applicant’s representatives further argued that allowing the AI entity to be designated as inventor responded to the public interest and to fairness, in that the public had a right to know how the invention was made. Also, patents thus granted would incentivise the development of AI systems.

The Board stated that the policy and fairness arguments adduced by the applicant’s representatives were not convincing. There is no legal requirement for the public to know who the inventor is and how the invention was made – the public is a third party with no rights in this regard. Similarly, there is no fairness requirement with respect to explaining how the invention was made – this may, if the applicant wishes, be explained in the description.

In summary, the Board’s approach indicates that where an AI system has been used by a natural person in creating an invention, this can be adequately handled under the EPC as it stands by naming that natural person as the inventor, with an option of explaining the process in the description, and that there is no requirement to make any special reinterpretation of the EPC to handle the situation. The Board pointed out that any changes to the present approach would require an amendment to the EPC, and that this fell within the remit of the relevant lawmakers, rather than that of the Board.