J 8/20 - Invention by AI

Key points

• An application was refused because the applicant, a natural person, wished to designate an Artificial Intelligence engine as the inventor. The applicant appeals in this case, which is known as the "DABUS" case. As an auxiliary request, "an amended designation of the inventor (EPO Form 1002) [was filed] stating that no person was identified as inventor as "the invention was conceived autonomously by DABUS", and that the appellant had derived the right to the European patent "by virtue of being the owner and creator of DABUS"."
• The Legal Board: "According to Article 81 EPC "[t]he European patent application shall designate the inventor" (first sentence); where the applicant is not the inventor or is not the sole inventor "[t]he designation shall contain a statement indicating the origin of the right to the European patent" (second sentence)."
• "Article 81, second sentence, EPC does not require a generic explanation as to why an applicant, who is not the inventor, is entitled to file a European patent application. The provision is more specific: it refers to the "origin of the right to the European patent". In this way, by its very wording, Article 81 EPC establishes a link to Article 60 EPC, where the right to a European patent is mentioned and provided for."
• "Under Article 60(1), first sentence, EPC, "[t]he right to a European patent shall belong to the inventor or his successor in title"."
• "The main request is not allowable because the designation of the inventor does not comply with Article 81, first sentence, EPC. Under the EPC the designated inventor has to be a person with legal capacity. "
• As a comment, the Legal Board refers to "a person with legal capacity", but this phrase perhaps does not imply an additional requirement. I would expect that any human can be designated as the inventor without an additional requirement for legal capacity.
•  The Legal Board adds: "Article 60(1) EPC vests the rights to the European patent in the inventor; thus, it postulates a person with legal capacity."
• "The purpose of the provisions dealing with the inventor and its designation is primarily to confer and to protect rights of the inventor (J 8/82, Reasons, points 12-13), to facilitate the enforcement of potential compensation claims provided under domestic law, and to identify a legal basis for entitlement to the application (on this see also the EPO President's comments, points 5-9). Designating a machine without legal capacity can serve neither of these purposes."
• "In summary, the main request does not comply with the EPC, because a machine is not an inventor within the meaning of the EPC. For this reason alone it is not allowable. "
• Then, somewhat surprisingly: "The auxiliary request relies on the argument that Article 81, first sentence, EPC does not apply where the application does not relate to a human-made invention. The Board agrees with this [argument of the applicant]. " "The provisions concerning the designation were drafted to confer specific rights on the inventor. It is arguable that where no human inventor can be identified, then the ratio legis of Article 81, first sentence, EPC does not apply."
• The auxiliary request is rejected for failure to comply with Art.81 second sentence, which requires "a statement indicating the origin of the right to the European patent".
• The Board is of the view that in the auxiliary request, "inventor and applicant differ".
• The Legal Board does not explain this. Arguably, there is no inventor in the sense of Art. 81 first sentence, and the case of an undefined value and a defined value seems to differ from the normal case of two defined and unequal values. 
• " According to the statement accompanying the auxiliary request, the appellant has derived the right to the European patent as owner and creator of the machine. This statement does not bring the appellant within the scope of Article 60(1) EPC. Indeed, it does not refer to a legal situation or transaction which would have made him successor in title of an inventor within the meaning of the EPC. For this reason, the auxiliary request does not comply with Article 81, second sentence, EPC in conjunction with Article 60(1) EPC, and is not allowable."
• The Legal Board explains this no further in this r.4.4.2.
However, the Legal Board explained that "Both the concepts of inventor and successor in title [in Art. 60(1) EPC are notions of the EPC; they must be interpreted uniformly and autonomously. While the concept of inventor does not require any support from domestic legislation, the concept of successor in title implies an interaction with national law. Indeed, the EPC has not established a comprehensive, self-sufficient legal order and private law. This does not mean that Article 60(1) EPC constitutes a pure reference to national legislation devoid of any content. "Successor in title" has an ordinary meaning under Article 31(1) of the Vienna Convention on the Law of Treaties (1969) ("VCLT"): it refers to a situation where a pre-existing right goes from one subject (the legal predecessor; see also Article 55(1)(a) EPC) into the sphere of another (the legal successor, Article 60(1) EPC). National law governs the question of whether the transfer is valid or has occurred by operation of a contract, inheritance or other rules of law. Since the EPC is silent on the matter with the exception of employment relationships, a national court seized with the issue will identify the applicable rules according to their domestic conflict of laws-provisions"
• The Legal Board: "it is arguable that AI-generated inventions too are patentable under Article 52(1) EPC. If national courts were to follow this interpretation, the scope of Article 52(1) EPC and Article 60(1) EPC would not be coextensive: there would be inventions patentable under Article 52(1) EPC, for which no right to a patent is provided under Article 60(1) EPC."
• " The Board is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law. The EPC, in turn, does not prevent the applicant from providing information in the application which is not relevant for carrying out the invention [but providing information as to the conception of the invention by the AI system DABUS]"
  

EPO J 8/20 - J 0008/20

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

source http://justpatentlaw.blogspot.com/2022/08/j-820-invention-by-ai.html