Patents: bid to name machine as inventor rejected

Out-Law News | 29 Jan 2020 | 3:59 pm | 2 min. read

An attempt to register a machine as an inventor has been rejected by the European Patent Office (EPO).

US-based applicant Stephen Thaler had applied to the EPO seeking registration of two European patents for inventions that he claimed derived from a machine called 'DABUS', which Thaler described as "a type of connectionist artificial intelligence".

The EPO said, though, that the applications did not conform to the requirements of the European Patent Convention (EPC).

Marfe Mark

Mark Marfe

Senior Associate

An issue that is more likely to concern businesses is how to secure protection for AI developments at all. AI can often fall within the exclusions from patent protection, such as computer software

The EPC requires patent applications filed at the EPO to designate the inventor. Where the applicant is not the inventor, they must ensure that the family name, given names and full address of the inventor are stated.

The EPO said: "Names given to things may not be equated with names of natural persons. Names given to natural persons, whether composed of a given name and a family name or mononymous, serve not only the function of identifying them but enable them to exercise their rights and form part of their personality. Things have no rights which a name would allow them to exercise."

"The legal framework of the EPC provides for natural persons, legal persons and bodies equivalent to legal persons ... acting in certain capacities. The EPC does not provide for non-persons, i.e. neither natural nor legal persons, as applicant, inventor or in any other role in the patent grant proceedings. In the context of inventorship reference is made only to natural persons. This indicates a clear legislative understanding that the inventor is a natural person," it said.

Thaler had argued that he had acquired the rights in the DABUS inventions since he was the owner and employer of the machine and was therefore assigned the rights to intellectual property (IP) the machine created.

However, the EPO said that AI systems or machines do not have rights or any "legal personality comparable to natural or legal persons". It went on to explain that AI systems or machines "can be neither employed nor can they transfer any rights to a successor in title".

"Since an AI system or a machine cannot have rights, it cannot be considered to own its output or own any alleged invention and it cannot transfer any rights thereto," the EPO said.

The EPO said the view that inventors need to be natural persons "appears to be an internationally applicable standard", citing previous rulings to that effect by a number of different national courts and the approach taken by other patent offices, including those in China, Japan, Korea and the US.

"No national law has been determined which would recognise a thing, in particular an AI system or a machine, as an inventor," the EPO said.

Patent law expert Mark Marfé of Pinsent Masons, the law firm behind Out-Law, said: "The outcome was expected and it is interesting to read the EPO’s reasoning. From a technical perspective, it is also interesting to see the evolution from knowledge aided design patent applications, such as those concerning data input into a computer to design an improved drill bit, to patents for the product itself created by AI. I think the former is what we will see more of for now from commercial entities wanting to safeguard their business through the filing of patents but it will be interesting to see how this area develops. For example, in December, the World Intellectual Property Organization (WIPO) launched a public consultation process on AI and IP policy, inviting feedback on the questions likely to face IP policy makers about AI. An issue that is more likely to concern businesses is how to secure protection for AI developments at all. AI can often fall within the exclusions from patent protection, such as computer software."

In the UK, the UK's Patents Act 1977 does not envisage inventions created by machines. The legislation requires that inventions be attributed to 'a person' to be eligible for patent protection.

Last year the UK's Intellectual Property Office (IPO) updated its formalities manual for patent examiners to state that an 'AI inventor' would not meet the 'person' requirement and that such applications for patent protection are to be "taken to be withdrawn".