February 2020 ONLY A NATURAL PERSON CAN BE AN INVENTOR
In a pair of Decisions that seems very likely to be appealed, the EPO has stated that the requirements for an inventor can only be fulfilled by a natural person. The naming of the inventor protects their rights associated with the invention, including their right to be identified. Machines or non-humans have no such rights and thus cannot be an inventor.
Two European patent applications were filed (EP3564144 and EP3563896), but no Designation of the Inventors accompanied the filings. In accordance with standard practice, the EPO issued its notifications requesting the filing of these documents, and in response the applicant filed Designation forms indicating that the inventor was “DABUS” and noting that “the invention was autonomously generated by an artificial intelligence”. The forms also indicated that the applicant obtained its rights from DABUS “as employer”. Approximately 10 days later replacement Designation forms were filed, which were substantially identical to the originals, with the exception that the applicant indicated it acquired its rights in the applications as “successor in title”.
The original Designation was accompanied by a statement noting that DABUS is a type of “Creativity Machine” or connectionist artificial intelligence, and providing a brief explanation of its structure and working arrangements. Specifically, the statement suggested that DABUS received training in general knowledge in the relevant field only, and then independently conceived the invention and identified it as novel. If such an action were to be carried by a human, the statement suggested, they would be named as the inventor.
Oral proceedings were appointed in which the two cases were consolidated.
The Receiving Section suggested that it was necessary to file a Designation of Inventor form containing the family name, given name and full address of the inventor in accordance with Article 81 and Rule 19(1) EPC. These requirements confirm that the inventor must be a natural person. In the absence of a suitable Designation, the application is deficient.
In an extensive submission prior to the oral proceedings the applicant argued that the requirement for the provision of a family name, given name and address does not require the inventor to be a natural person, and cannot imply additional requirements not explicitly set out. While the Travaux préparatoires do not contemplate a machine being an inventor, neither do they exclude this possibility. It was further argued that a fundamental principle of patent law is that the deviser of the invention should be identified, and this must apply whether the actual deviser is a human person or a machine. With regards to the moral rights of the inventor to be named, it is only the true inventor who has such moral rights, and the obligation is on the applicant to name the inventor. This again does not exclude a machine from being an inventor. It was also argued that it would be morally and legal wrong for the incorrect deviser of the invention to be identified, especially if this was simply to name a human person and not the true inventor.
At the oral proceedings the applicant reiterated the argumentation presented in the written submissions and particularly stressed the need to correctly name the inventor. The prohibition of AI systems as inventors could exclude inventions made by such AI system contrary to Articles 52-57 EPC.
After a very brief deliberation only, the Receiving Section announced its decision to refuse the application as no appropriate Designation had been filed.
Giving its reasons, the Receiving Section suggested that names of machines do not equate to names of natural persons; such names enable that person to exercise their moral rights, and form part of their personality. The EPC provides for natural and legal persons and not for non-persons, such as machines. The Travaux préparatoires consistently refers to the inventor being a natural person and so excludes legal persons as well as non-natural persons from being an inventor. This is further confirmed by the rights that are accorded to the inventors, none of which could apply to a non-human, for example a machine. The requirement of the inventor to be a natural person is an internationally applicable standard, and has been followed by at least China, Japan, Korea and the US.
The requirement to state the applicant’s derivation of rights is also an indication that the inventor must be a human person. A machine cannot be employed, cannot transfer any rights to a successor in title, and cannot enter into an agreement. The inventor must be able to do at least one of these and thus must be a human person. The Receiving Section also suggested that the formal requirements which must be fulfilled in order for a patent to be granted are entirely separate from substantive patentability issues. Hence a decision that machines cannot be inventors is not contrary to Articles 52-57 EPC.
Thus the current practice of the EPO Receiving Section is that an inventor must be a human person, and failure to designate at least one human person will result in refusal of an application. This implies that patent protection cannot be obtained for inventions made by any form of AI, unless the human person who developed the AI could be considered an inventor.
As noted above, it seems very likely that an Appeal will be filed on this matter, and we will of course report on any such Appeal.
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