We already referred about the Dabus case (see here, and here) and that appeal proceedings are pending before the EPO, against two decisions of 27 January 2020 that refused the applications designating an AI system as the inventor.
Now the EPO President requested the Board of Appeal to comment on the relevant questions (here). The EPO decisions held that the inventor must be a human being to fulfil the requirement for designation of inventor in the procedural and substantive terms. This seems also an international standard (based on discussions with the IP5 offices). The applicant contests such a standard. Given the importance of the issue and that this is the first time the EPO will take formal position on this, the President requested to comment on it.
The Board of Appeal granted the EPO President’s request (here). There are two main topics on which he wishes to comment. And the BoA made some additional thoughts:
(i) If the inventor must be a human being from a formal and substantive angle – what is the purpose of such requirement? Is it redundant?
The BoA advanced that:
- one possible view is that the sole purpose is to enhance the protection of the inventor’s right to be mentioned as such. In this case, if the application does not mention a person with legal personality as inventor, it could be argued that the requirement to designate the inventor is redundant. This would be based on the concept that human intervention is not an inherent element of a patentable invention under Art. 52 EPC.
- On the other hand, if the concept of “invention” was limited to human-made inventions, the function of the inventor designation rules would also be to facilitate examination of a substantial requirement.
(ii) Does the EPO have competence to examine the acquisition of the rights on the invention? If yes, what principles should the EPO apply?
The President now has 3 months to deliver his comments. More updates soon.
EPO Board of Appeal, communication of 1 February 2021, in the appeal proceedings relating EP 3564144