EPLAW PATENT BLOG

EPO – J 8/20 and J 9/20 – Artificial Intelligence – overview

Posted: December 23rd, 2021

European Patent Office, Legal Board of Appeal, Order in cases J 8/20 and J 9/20 published on December 21, 2021; reported by Dr. Klaus Reindl and Dr. Georg Anetsberger, BARDEHLE PAGENBERG

In a Press Communiqué of December 21, 2021, the Legal Board of Appeal published the order in cases J 8/20 and J 9/20 dealing with the question whether an artificial intelligence system can be named as an inventor. The decision of the Receiving Section of the EPO that this is not the case was confirmed. Both appeals were dismissed.

Background:

In 2018, two patent applications, published as EP 3 563 896 A1 und EP 3 564 144 A1, were filed by the same applicant. The first application relates to techniques for generating enhanced human attention by means of special signal sequences, and the second application relates to a container for beverages with a wall having fractal profiles. The applicant initially failed in each case to provide information about the inventor.

Article 81 of the European Patent Convention (EPC) requires, however, the designation of the inventor which, according to Rule 19 (1) EPC, must contain the inventor’s name and address as well as a a statement how the applicant obtained the rights to the invention. If this information is not provided in due time, the application will be refused according to Rule 60 (1) EPC.

In both cases, the EPO informed the applicant that the designation must be made. In response, the applicant stated for both applications that the inventor was an Artificial Intelligence (AI) machine called “Device for the Autonomous Bootstrapping of Unified Science” (DABUS). The applicant further argued that he had acquired the right to the respective invention, because he is the owner of DABUS. The applicant hence requested the registration of DABUS as the inventor. In the decisions of January 27, 2020, the EPO refused both applications due to non-compliance with the formal requirements according to the EPC. It was argued that according to the EPC only natural persons could be inventors. Apart from that, the machine could not transfer any rights to the applicant, and hence, the argument of being the owner of DABUS could not be considered as a statement on how the applicant obtained the rights to the invention.

Both decisions were appealed. The Legal Board of Appeal announced its decision to dismiss the appeal in both cases (J 8/20 and J 9/20) on December 21, 2021, and hence confirmed the earlier decisions of the EPO. The Legal Board of Appeal argued that according to the EPC, the inventor had to be a person with legal capacity. For this reason, the AI DABUS cannot be designated as inventor. The reasoned decision will be published in due course.

Parallel cases:

There are also a number of parallel cases, in which the naming of the AI DABUS as inventor is critically discussed:

The German Patent and Trademark Office (GPTO) rejected two parallel applications (DE 10 2019 128 120 and DE 10 2019 129 136) in which DABUS was designated as inventor. Interestingly, according to press reports, upon appeal the German Federal Patent Court decided that the designation of the inventor needs to relate to a human being, but the computer can be mentioned additionally in the designation of the inventor as being involved in the invention (the decision has not yet been made public).

In the United States of America (USA), the United States Patent and Trademark Office (USPTO) denied a petition in this regard for application number 16/524,350. According to the USPTO, only natural persons could be inventors according the US Patent Act, and hence, an AI is excluded from being designated as inventor. The District Court for the Eastern District of Virginia confirmed the decision of the USPTO recently. This decision has been appealed, and the appeal is still pending before the Court of Appeal for the Federal Circuit.

In the United Kingdom (UK), the Intellectual Property Office of the United Kingdom (UKIPO) also decided that DABUS is not a person, and hence, cannot be considered as being an inventor. In an appeal, the Court of Appeal, in its decision of September 2021, followed the decision in the USA and argued that an AI cannot be considered as an inventor, and hence, the appeal was dismissed.

Despite the above, completely different results have come about under two patent acts, which now allow the AI DABUS to be named as inventor. The Federal Court of Australia ruled that an AI system could be named as inventor under the Australian Patent Act. But, such a non-human inventor can neither be an applicant for a patent nor a grantee of a patent. Shortly before this decision of the Federal Court of Australia, the South African Patent Office had granted a patent with the AI DABUS named as inventor. This seems to be the very first granted patent that recognizes an AI as an inventor.

The EPO press release can be read here.

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