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22 December 2021PatentsAlex Baldwin

EPO affirms that AI cannot invent

The European Patent Office (EPO) has ruled that only humans can invent, dismissing appeals looking to list an artificial intelligence (AI) as a named inventor on a patent.

The office’s Board of Appeal held that an inventor designated in a patent application “must be a human being”, in line with the European Patent Convention (EPC).

Professor Ryan Abbott, who leads the University of Surrey team behind the DABUS project, told WIPR that he did not believe the decision represented “a correct application” of the EPC.

The board heard oral arguments in two combined cases—J 8/20 and J 9/20—yesterday, December 21, with a full written decision to be issued “in due course”.

A DABUS team filed patent applications at the EPO, and in the UK, Australia, South Africa and other jurisdictions listing its Device for Autonomous Bootstrapping of Unified Sentience (DABUS) AI as an inventor.

The team claimed that the AI was the sole inventor of both a food product and an emergency light and have since argued before IP offices and courts in several countries that AIs can and should be recognised as inventors.

Yesterday’s hearing considered whether a patent applicant could designate an AI as an inventor despite it not having “legal capacity”.

The Board of Appeal eventually upheld the EPO’s prior refusals of DABUS’ two patent applications, holding that the office had been consistent with EPC requirements that an inventor had to “be a person with legal capacity”.

It also refused an auxiliary request addressing the fact that “no person” had been identified as an inventor but a “natural person” was indicated to have "the right to the European Patent by virtue of being the owner and creator of" DABUS.

Finally, the board of appeal found that the EPO’s Receiving Section was right to assess whether DABUS’ patent applications were consistent with Article 81 of the EPC’s inventor designation requirements, in conjunction with Article 60(1) EPC requirements, which state that the right to a European patent belongs to the inventor or his/hers successor.

“It was disappointing that the board in its decision acknowledged that their holding meant AI-generated inventions were unpatentable at the EPO, and this decision is in opposition to a growing international consensus that protections for AI-generated inventions are vital to promoting innovation,” said Abbott.

Peter Finnie, partner at Potter Clarkson, also disagreed with the EPO’s ruling, claiming that the office’s rules for determining inventors are no longer “fit for purpose” and could ultimately be “bad news” for the pharmaceutical industry.

Finnie said: “Modern innovators are increasingly embracing machine assistance and the risk here is that unless patent laws can change to keep pace with this trend we won’t get the necessary investment in key technologies.

“Worse still, we will end up with a world dominated by trade secrets where no one shares information, rather than the wider dissemination of technology that patents (perhaps counter-intuitively) promote,” he warned.

The inventor debate

Prior to the University of Sussex’s DABUS campaign, no IP office formally recognised that anything other than humans can be listed as inventors.

While the UK Intellectual Property Office (IPO), the US Patent and Trademark Office and the EPO initially dismissed the applications, South Africa became the first country to recognise DABUS as an inventor in a decision handed down in July, albeit in an unsubstansive way.

A week later, the Australian Federal Court also ruled that an AI could be a named inventor, but held that non-humans cannot apply for patents.

“Only a human or other legal person can be an owner, controller or patentee. That of course includes an inventor who is a human. But it is a fallacy to argue from this that an inventor can only be a human,” Federal Court Justice Beach said.

These conflicting decisions, alongside a dissenting opinion from Lord Justice Birss at the English Court of Appeal, has sparked a debate about potential deficiencies in the global patent system and whether patents for AI inventions are achievable.

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