At the end of December 2019, the European Patent Office (EPO) refused two patent applications (No. 18275163 and No. 18275174) filed by Dr Stephen Thaler, in which an artificial intelligence developed by Dr Thaler, named DABUS, was designated as inventor. The inventions, concerning a particular food container and a light emitting device, were independently created by DABUS, a connectionist Artificial Intelligence (AI) system. This DABUS system comprises two different neural networks and is capable of developing new concepts starting from a pre-determined wealth of knowledge.

The grounds for the EPO’s decision, released on 27 January 2020, expressed the principle that the inventor designated in a patent application shall necessarily be a human and not an AI[1].

Primarily, the EPO’s argument stems from Article 81 of the European Patent Convention (EPC) and Rule 19 of its relevant implementing Regulation. In accordance with those provisions a European patent application shall include, among other things, the designation of the inventor. If the applicant is not the inventor, such a designation «shall contain a statement indicating the origin of the right to the European patent» (Article 81). Further, in accordance with the Rule 19, «the designation shall state the family name, given names and full address of the inventor, contain the statement referred to in Article 81 and bear the signature of the applicant or his representative». These provisions, the EPO continues, serve not only the merely formal function of providing the certainty of the inventor’s designation, but they are also aimed at ensuring that the inventor designated in the patent application could exercise the rights granted to him by the EPC (for example, see the Article 62 EPC pursuant to which the inventor shall have the right to be mentioned as such before the EPO vis-à-vis the proprietor of the European patent).

The EPO found that only subjects with legal personality can be designated as patent right holders, based on the current legal framework. Such a legislative standard is fully in line not only with the EPC contracting States’ case-law, but it is also followed by several national patent offices. Therefore, since AI systems do not have any legal personality at this stage, that is reserved for natural persons and legal persons, AI systems or machines cannot have or exercise any rights provided for in the EPC. The EPO specified that an AI system could not even be compared to a legal person – which owns rights on the basis of a fictio iuris – since such legal fictions are created and governed by national legislation and no national legislation has assigned this quality to an artificial intelligence.

Based on these grounds, according to the EPO, there are no reasons to apply the Article 60 EPC as invoked by the applicant. Such a provision, which regards the employee’s inventions, cannot be interpreted broadly in this case, given that an AI system, due to its lack of legal personality, cannot be party to an employment agreement. Finally, the EPO found that an AI cannot even be regarded as a subject that is not able to exercise its rights, in the way minors or incapacitated persons are, as these subjects have legal personality even though they are not able to exercise their rights personally. Furthermore, also in these cases national legislators define with specific provisions which subjects are able to exercise their rights through the interposition of a third party.

The two decisions at issue are particularly interesting as they represent the first ones regarding the patentability of an invention independently developed by an AI system. In any case, the dispute is still on going, the applicants having filed an appeal before the Boards of Appeal.

 

[1] The Grounds for the decisions are available on the following links:

https://register.epo.org/application?documentId=E4B63OBI2076498&number=EP18275174&lng=en&npl=false

https://register.epo.org/application?documentId=E4B63SD62191498&number=EP18275163&lng=en&npl=false