The DABUS saga continued…

Just a few days before Holidays season, the Legal Board of Appeal announced its ruling in the cases J 8/20 and J 9/20, thus confirming the decisions of the Receiving Section of the European Patent Office, both of which has refused the DABUS applications EP 18 275 163 and EP 18 275 174. These well-known applications designated an artificial intelligence system as the inventor. The applicant argued in the application that inventions had been autonomously created by DABUS.

In order to provide for all alternative scenarios in respect of AI innovation, the applicant submitted an auxiliary request according to which a natural person was indicated to have "the right to the European Patent by virtue of being the owner and creator of" the artificial intelligence system DABUS. The Board of Appeal also rejected this request.

Legal basis and arguments

According to Article 81 EPC and Rule 19(1) EPC, the designation of the inventor is a formal requirement that a patent application must fulfill. The examination of this requirement thus is a first step in the patent examination process and it is to be examined without taking into consideration whether the invention as such fulfills the patentability requirements.

This Kat wonders, is AI really an inventor?

In the decisions of the Receiving Section of the EPO, it was clarified that the application was not consistent with Article 81 EPC and based its decision on two main arguments. Firstly, it concluded that only a human inventor could be an inventor within the meaning of the EPC. For this reason, designating a machine as inventor did not comply with the requirements set out in Article 81 and Rule 19(1) EPC. Secondly, it ruled that a machine could not transfer any rights to the applicant, since it lacks legal capacity. Thus, the applicant’s statement that it was the successor-in-title because it owned the machine did not satisfy the requirements of Article 81 EPC in conjunction with Article 60(1) EPC.

The Board of Appeal dismissed the appeal at the last day of the oral proceeding. It provided orally the following reasoning in both cases, namely that in order to be an inventor, there has to be a person with legal capacity. Regarding the auxiliary request, a statement indicating the origin of the right to the European patent under Article 81 EPC, second sentence EPC had to be in conformity with Article 60(1) EPC. According to the Board of Appeal, this was not the case in the DABUS application.

The DABUS patent applications

The DABUS patent applications have been submitted in several jurisdictions, contextualizing the debate on the patentability of AI-originating inventions within the patent registration process in various jurisdictions. To read more on previous stages of this saga, see the IPKat posts here, here and here.. With the exception of South Africa, which granted the DABUS application, and Australia, which provided that the rights to the DABUS patent could be assigned to Dr Thaler, UK, US and EPO have all refused the patent applications.

As AI-originating innovations are sure to stay, the question remains: Will the patent system ultimately have to adjust?

We look forward to reading the ruling of the Board of Appeal in its entirity.