At present, the “patent world” is dealing with decisions of receiving offices responsible for the formal examination of patent applications, which reject patent applications in which an artificial intelligence (AI), the so-called DABUS Creativity Machine, is named as inventor.

The machine had discovered the novelty of its own idea itself. Since the idea seemed to be patentable, the owner of the machine also considered it possible to file a patent application, whereby the machine was honestly to be named as the inventor.

The Receiving Office of the EPO first sent out a negative formal notice and then invited to oral proceedings.

At the oral hearing, the applicant basically took the view that artificial intelligences had to be accepted as inventors in order for the patent register not to contain any false statements. If, on the other hand, artificial intelligences were not accepted as inventors, then all these inventions would be excluded from patentability, contrary to Articles 52 to 57 of the EPC, which could probably not be intended by the legislator.

The Receiving Division rejected the applications due to formal deficiencies in the designation of the inventor. It referred to Article 81 and Rule 19(1) EPC, which require the inventor to be designated and, if the applicant is not the inventor, a statement to be made as to how the right to the European patent has passed to the applicant. According to the Receiving Office, Rule 19(1) EPC requires a first name, a surname and a full address, which is not provided by the DABUS AI machine. They argued that the inventor has a large number of rights which only a natural person can exercise. A patent application would always involve a natural inventor and it must be possible for anyone to challenge the transfer of the invention from the inventor to the applicant, which would not be possible if an inventor’s name was not filed or an incorrect name was filed. According to the Receiving Office, a transfer of the right within the scope of an employment relationship could also not be assumed, since machines were not employed, but at best “possessed”. Although the owner of an AI machine could own the work results of the machine, ownership or possession had to be separated from the question of inventiveness. This would also be unanimously advocated internationally, for example in China, Japan, Korea and the USA. None of these countries had so far recognized an artificial system or machine as an inventor.

In our view, the decision of the European Patent Office was quite predictable. It was actually hardly conceivable that an Examining Division would press ahead and admit an artificial intelligence as inventor. However, these procedures are now opening up a debate, at least in specialist circles and possibly beyond. The question is not whether, at present and under the current legal conditions, an artificial intelligence can be an inventor. Rather, it is now being discussed whether and how the results of the work of artificial intelligences can be protected and evaluated in the future. There is no doubt that the results of the work of an artificial intelligence can be exploitable under patent law. But it should be clarified, for example, whether the owner of a machine, the person who operated the machine at the time of the invention, the person who programmed the machine, or even a trainer of a neural network typically are to be represented in the inventorship.

In both cases an appeal has been filed. A decision of the Board of Appeal is expected in about 2 to 3 years -we’ll stay tuned.

EPO decisions on EP 1 818 161.0 and EP 1 816 909.4

May 12, 2020
Thorsten Brüntjen
Patent Attorney