EPO Rejects Patent Applications with AI Inventor

31 January 2020

The EPO has recently issued decisions refusing two applications (EP18275163 & EP18275174) that attempted to name a computer system as the sole inventor. In both cases the applications were refused for failure to comply with the formal EPC provisions regarding the designation of the inventor.

The applications relate to a food container with a fractal wall profile (EP18275163) and a pulsed light source having a particular frequency and fractal dimension (EP18275174). The applicant maintained that he had had no personal input to the discovery of the underlying inventions, which were claimed to be entirely the work of a computer system (itself the subject of at least one granted US patent) running a number of neural networks, going by the name of “DABUS”. The applicant’s only personal contribution was to train DABUS with “general knowledge”, with the “inventions” arising from self-perturbations in a first underlying neural network and being identified as novel and having inventive potential by a second “critic” neural network.

The EPO does not investigate the details of inventorship or entitlement to patent applications, leaving this to national law. However, the two applications were originally filed a) with an explicit indication that the applicant was not the inventor and b) without a separate designation of inventor, thus leading to a formal deficiency notice. In response to that notice, the applicant provided the appropriate EPO form naming DABUS as the inventor, but explicitly indicating that DABUS was a computer system running artificial intelligence. The applicant initially claimed that he had derived the right to the invention through employment of the machine, before later “correcting” that to claim acquisition of the rights as the successor in title.

The EPO Receiving Section, which examines applications for formal requirements, was unimpressed and, citing extensively from the travaux preparatoires to the EPC and a range of case law, indicated that it appeared to be settled under the EPC that inventors had to be natural persons, which DABUS was explicitly not.

Consolidated oral proceedings were held on both cases in November 2019 and, despite further submissions from the applicant’s representative and some creative argumentation, the EPO maintained its position, in particular holding that indicating the name of a machine does not meet the requirements of Rule 19(1) EPC that the designation of inventor shall state the family name, given names and full address of the inventor. As a further (and arguably stronger) objection, the EPO indicated that the statements as to how the applicant acquired the rights to the invention did not meet the requirements of the EPC since, on the applicant’s own case, AI systems or machines cannot own property (such as rights in an invention) and also have no capacity to transfer it to the applicant, nor is it possible to “employ” a machine.

Given that the legal position that an inventor must be a natural person is widespread (the EPO decision cites a number of decisions of national courts, as well as support from the patent offices of China, Japan, Korea and the USA), the outcome of this case was surely entirely expected by the applicant and the filing of these applications and the subsequent challenge to this aspect of the law appears to be part of a wider campaign by the applicant to raise publicity for this issue and for DABUS in general. The applicant appears to have been given a number of opportunities to amend the designations of inventor to indicate a natural person, but has declined to do so on the basis that he considers that only DABUS is entitled to be credited.

The applicant can appeal these decisions to the EPO’s Boards of Appeal. Given the efforts to which he has already gone in his attempt to change/challenge the EPO approach in this area, an appeal would not be surprising. Equally, barring a significant change of heart at the EPO, which has clearly considered the law in this area in considerable depth before reaching these decisions, the prospects of any appeal succeeding seem very remote.

It should be noted that, contrary to the applicant’s arguments, this decision does not mean that inventions created using AI are unpatentable, but it is necessary to name at least one natural person as the inventor. This would normally be the person who has put the arrangements in place for the computer system to produce the results that it did, for example, by training it or providing the problem to be solved by the computer system.

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