Out-Law / Your Daily Need-To-Know

AI inventorship claim dismissed by EPO Board of Appeal

Out-Law News | 06 Jan 2022 | 3:14 pm | 2 min. read

Artificial intelligence (AI) systems cannot be named as an inventor on a patent application, the European Patent Office Board of Appeal (EPO BoA) has ruled.

According to a statement issued by the tribunal, the designated inventor for a European patent application must be a person with legal capacity.

The decision concerns ‘DABUS’, an AI system developed by US scientist and technologist Dr. Stephen Thaler. Dr Thaler designated DABUS as the inventor of two patent applications claiming that the subject matter of the applications had been created autonomously by DABUS.

Dr. Thaler has argued, across several jurisdictions, that patent law allows DABUS to be the named inventor on a patent application. That argument has been rejected by, amongst others, the Court of Appeal in London, a district court in the US state of Virginia, and now the EPO BoA. However, Thaler has so far been successful with his arguments in Australia and South Africa, although the former has been appealed. Germany’s Federal Patent Court found a compromise, recently ruling that the named inventor in a patent application must be a natural person, but that the AI system supposedly responsible for the underlying invention can be additionally named. 

The EPO BoA was considering the issue after Thaler appealed an earlier ruling by the EPO. The EPO had found that the European patent applications Thaler had submitted did not conform to the requirements of the European Patent Convention (EPC).

The EPC requires patent applications filed at the EPO to designate the inventor and further provides that the right to a European patent belongs to the inventor or his successor in title. The EPO previously considered that only a human inventor could be an inventor within the meaning of the EPC. Further, that a machine could not transfer any rights to the applicant. Therefore it considered that the statement that the applicant was successor in title because they owned the machine did not satisfy the requirements of the EPC. The EPO BoA has now upheld those findings.

As part of his appeal, Thaler submitted an auxiliary request according to which a natural person was indicated to have "the right to the European patent by virtue of being the owner and creator of" an AI system. However, the EPO BoA said that a statement indicating the origin of the right to the European patent had to conform with the provisions of the EPC and that this was not the case for the DABUS applications.

Full written reasons behind the EPO BoA’s decision are to be published in due course.

Sarah Taylor, patent law expert at Pinsent Masons, said: “While the Board of Appeal’s full reasoning will not be clear until the written decision has been handed down, this decision does not change anything – as it stands, an AI system cannot be named as an inventor of a European patent.”  However, Taylor said further developments in relation to the law on AI inventorship are anticipated, with the topic attracting global interest. She highlighted in particular the UK Intellectual Property Office’s AI and IP consultation, which concerns whether reform to existing patent laws is required to accommodate AI innovations.