It’s only human … - BOEHMERT & BOEHMERT

The European Patent Office has ruled at first instance that inventors are necessarily human beings. Two applications in which the patent applicant had designated an artificial intelligence as inventor were rejected.

The two applications EP 3 563 896 A1 and EP 3 564 144 A1 were filed by the same applicant in autumn 2018. The first application concerns techniques for attracting increased human attention by means of special signal sequences, the second application concerns food and beverage packaging with fractal side wall profiles. The applicant, a natural person from St. Charles, MO, USA, initially omitted an indication of the inventor. However, naming the inventor is mandatory under Art. 81 of the European Patent Convention (EPC). Under Rule 19(1) EPC, the designation must contain the surname, first name and full address of the inventor. If these details are not provided despite a request from the European Patent Office, the application will be rejected under Rule 60(1) EPC.

For both applications, the applicant stated upon request by the European Patent Office that the inventor was an AI machine called DABUS. He had acquired the right to the respective invention as legal successor, since he was the owner of DABUS. He applied to register DABUS as inventor.

Following oral proceedings on 25 November 2019, the European Patent Office has now decided to reject both applications for failure to comply with the formal requirements. In the two Decisions dated 27 January 2020 (which are identical in substance), the European Patent Office argues that the designation of an inventor is a mandatory requirement, and failure to comply must inevitably lead to the rejection of the application. Moreover, only natural persons, i.e. human beings, could be inventors. This is clear from the European Patent Convention, which only knows natural and legal persons, whereas an AI machine as a thing cannot be a bearer of rights and obligations. The legislative documents for the EPC also assumed that only humans can be considered as inventors. (In the 1960s and 1970s, however, this assumption was possibly more justifiable than it is today.) In addition, the Decisions point out that the other major patent offices in the USA, China, Japan and Korea, as well as national courts in a variety of jurisdictions, also assume that inventors can only be human beings.

In its Decisions – possibly disappointing for the applicant – the European Patent Office did not deal at all with the alleged contributions made by the AI machine DABUS to the two inventions applied for, and whether human beings who could and should have been named as inventors also contributed to these inventions. Furthermore, the Decisions do not give any clues as to who should have been named as the human inventor, provided that the AI machine had actually made a contribution to the invention. In any case, many experts doubt whether the currently available AI systems can be more than tools in the hands of human inventors, and that they are even capable of making creative contributions to a problem solution that would justify speaking of an inventorship.

In response to the applicant’s argument that the naming of the inventor must be factually correct and that the naming of a human being in the present case would only have concealed the true identity of the inventor DABUS, the European Patent Office states in the two Decisions that the naming of the inventor is merely a formal requirement and that the Patent Office cannot and may not check the correctness of the content of the naming according to Rule 19(2) EPC. In the European patent system, the national courts are responsible for this.

Although the Decisions are well-reasoned, they remain unsatisfactory on this point. It is one thing not to check the content of the contributions of the named inventors for accuracy, but it is quite another to reject an inventor’s naming which is assumed to be factually correct on purely formal grounds.

An Appeal against the rejection of the applications is possible. However, it is likely that in the European Patent System the national courts are ultimately the more appropriate forum to hear and decide whether an artificial intelligence has made substantive contributions to an invention and, if so, who is to be designated as the inventor. According to the current legal situation, only natural persons can be named as inventors, as emphasized by the EPO Decisions. In the AI context, the programmer of the AI, the person who provided the training data or the person who then interprets the results of the AI are natural candidates.

Discussions are in flux, and no generally accepted solutions have yet been established. In practice, it is therefore important to contractually determine at an early stage of the AI project, and with the involvement of all parties concerned who is to be entitled to the rights to the invention.

We will continue to keep you regularly informed about IP law developments in the exciting field of artificial intelligence.