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
On 21 September 2020 (full text, here), the England and Wales High Court (Patents Court – Judge Marcus Smith) dismissed the appeal brought by Dr. Thaler against the IPO decision of 4 December 2019 rejecting two patent applications indicating as inventor an AI system, a creativity machine called “Dabus”.
We reported that both the USPTO and the EPO rejected the corresponding US and EU applications filed by Dr. Thaler, with Dabus named as the inventor (here). Similarly, in its previous decision the IPO held that Dabus fails to meet the requirements of the Patents Act 1977 and that the “inventor” must be a person – meaning a natural person and not merely a legal person. Secondly, there could be no transfer of patent right to Dr. Thaler. Dabus cannot “own” anything capable of being transferred and had no power to assign any rights it might have.
The High Court substantially confirmed the IPO decision and dismissed the various grounds of appeal advanced by Dr. Thaler:
Inventor must be a person. Dr. Thaler did not contend that Dabus was a natural or legal person, and focussed instead on the contention that the “inventor” of statute is a legal construct detached from the question of personality. Inventorship should not be a substantial condition of the grant of patent. On the contrary, the Court held that under the Patents Act 1977 the applicant for a patent must be a “person” and a patent can only be granted to a “person” – whatever the meaning of the term “inventor”. This means that there is a correlation between the inventor and the first “owner” of the invention. Also, the inventor is defined by the Patents Act 1977 as the “actual deviser” of the invention. Although there is no express statement that an inventor must be a person, the term “deviser” at least implies “someone” devising “something”. The natural reading is thus that the inventor is a person and the invention a thing.
AI as “inventor” is incapable of conveying any property on the invention to its owner. The law differentiates between the first creation of rights in property and their subsequent transfer. Even if Dabus was capable of being an “inventor”, Dabus would by reason of its status as a thing a not a person be incapable of “own” any initial right and of conveying any property to Dr. Thaler. In sum, AI lacks any ability to “own” and “transfer”.
No analogy with computer-generated works. Any analogy with computer-generated works provisions under UK copyright law is to be rejected. The Court emphasized the formal role of patent applications: merely inventing something does not result in a patent being granted to the inventor. A patent must be applied for and that must be done by a person. There must either be an application by the inventor (not Dabus as it is not an inventor nor a person) or the inventor must have transferred the right to apply enabling Dr. Thaler to apply (which again cannot be the case).
This decision comes as no surprise and furhter confirms the same position taken by the USPTO and the EPO. According to the Court, despite the absent definition of “inventor”, the law is clear (and so the concept of “inventor” as “person”). And the emerging role of AI as inventor is mostly a policy problem that lawmakers (not Courts) have to cope with.
The question is however still debated. On 7 September 2020, the UK government published a call for views on the future relationship between AI and IP (here). And WIPO conversation in July 2020 (here) showed different approaches to the inventorship issue. See for example a Chinese view from HE Juan (Senior Judge of the Intellectual Property Court of the Supreme People’s Court of the People’s Republic of China): “for AI- generated-inventions, as long as they meet the legal requirements, they are not excluded from patent protection […] There are no obstacles to recognizing AI as an inventor at the legal and practical levels. Even if the inventor is credited to be only a natural person, there is the possibility of creating a legal subject status for AI” (here). Yet, most western scholars firmly see AI as a mere tool.
In any case, Dr. Thaler is not desisting. He filed appeals in the EPO in March 2020 (here). More updates soon…
England and Wales High Court (Patents Court), Judge Marcus Smith, decision of 21 September 2020, Stephen L Thaler v. the Comptroller-general of Patents, Designs and Trade Mark