The EPO Board of Appeal has published its full decision on the question of whether a machine can be an inventor (J 8/20). The Board of Appeal had previously announced its decision to refuse two European patent applications naming an algorithm (“DABUS”) as the sole inventor at the end of last year.
The decision in J 8/20 demonstrates that the current patent system is more than capable of dealing with AI inventions when and if they arise, without harming innovation or treating the AI inventors unfairly. Thus, contrary to the recent Nature article on this topic, AI is not breaking patent law.
Case Background
J 8/20 relates to appeals of the decisions to refuse two European patent applications (EP3564144 and EP3563896) for failing to designate a natural person as an inventor. The patent applications purportedly relate to the inventions of an AI (“DABUS”). Whilst the AI was specified as the inventor, the patent applicant (and self identified owner of the inventions) was Dr Thaler.
Succession of title
One of the fundamental issues with AI inventors is establishing the chain of title from the invention to the applicant for the invention from an inventor (the AI) lacking legal personality. Whilst DABUS is said to be capable of inventing, it does not yet seem capable of applying and owning a patent for its invention. This responsibility has been taken on by the inventor of DABUS, Dr Thaler. Dr Thaler argued that he derived the right to DABUS’s inventions by virtue of being the AI’s employer.
The EPO Receiving Section rejected the applications on the ground that the applicant’s right to the invention had not been established. Particularly, DABUS lacks legal personality and so cannot transfer rights to the inventions to Dr Thaler (Article 60(1) EPC and Article 81 EPC). The Board of Appeal agreed with this assessment, noting that “under the EPC the designated inventor has to be a person with legal capacity. This is not merely an assumption on which the EPC was drafted. It is the ordinary meaning of the term inventor”.
Innovation and fairness
A central tenet of the AI inventor team’s argument is that denying applicants the right to name an AI as an inventor will stifle innovation. However, this argument ignores the simple workaround that, under European patent law, the user or the owner of a device involved in an inventive activity can just designate themselves as inventor (r. 4.6.6).
The Board of Appeal in the case in question also rejected the applicants argument that the public has a right to know who the inventor is and how the invention was made. The Board of Appeal noted that an inventor has the right for their name to be withheld from publication, and that a third party has no rights in this respect (r. 4.3.6).
The Board of Appeal concluded that they were convinced that there is not a problem of unequal treatment for computer assisted inventions calling for an evolutive interpretation of European patent law. The Board of Appeal particularly was 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 the inventor under European patent law.
If an applicant wished to acknowledge the AI inventor out of fairness, they are free to do this in the description (r. 4.3.7). If DABUS is an inventor, the real question of fairness is therefore how Dr Thaler is planning to compensate DABUS in exchange for Dr Thaler’s exploitation of DABUS’s inventions absent an employment contract between Dr Thaler and DABUS, that DABUS freely entered into.
Final thoughts
While philosophical discussions of AI inventorship may soon become pertinent as the field develops, the Board of Appeal in J 8/20 found no legal, moral or practical difficulties with dealing with such inventions under the current system.
As a final observation, it is a shame that the present debate over AI inventorship is based on questionable science. Dr Thaler claims that his algorithms are not just capable of inventing, but that they are also capable of sentience and near-death experiences. As long ago as 1996, Dr Thaler also claimed that his algorithms provide credible evidence for a “virtual afterlife”, and the religious concepts of salvation and damnation. The Board in J 8/20 stressed that the appeal did not relate to whether an AI, or DABUS in particular, is capable of inventing. Unlike the courts and patent offices, however, the willingness of the patent community to take Dr Thaler and his “imagination engines” seriously is rather embarrassing.
This post is based on a previous article on IPKat.
