Press Communiqué of 6 July 2022 on decision J 8/20 (AI system as inventor)

The Legal Board of Appeal of the European Patent Office issued the written reasons for its decision in case  J 8/20 on 5 July 2022. At the end of the oral proceedings on 21 December 2021, the Legal Board of Appeal had announced its decision to dismiss the appeal in this case. The Legal Board of Appeal confirmed the decision of the Receiving Section of the European Patent Office to refuse the application EP 18 275 163, in which an artificial intelligence system called DABUS was designated as inventor in the application form. The Legal Board of Appeal also refused the auxiliary request according to which no person had been identified as inventor but merely a natural person was indicated to have "the right to the European Patent by virtue of being the owner and creator of" the artificial intelligence system DABUS.

After the oral proceedings, the applicant had been informed in a communication dated 31 January 2022 that the application was deemed to be withdrawn due to the non-payment of fees by the applicant. On 20 March 2020, the appellant filed a request for further processing, which was granted by the Examining Division on 6 April 2022. This led to the issuing of the written decision by the Legal Board of Appeal.

Background

Under Article 81 EPC the applicant must designate the inventor. According to Article 60(1) EPC the right to a European patent belongs to the inventor or his successor in title.

In case J 8/20 the question arose as to whether the applicant, when applying for a European patent, can designate as inventor an artificial intelligence machine which does not have legal capacity. Applications designating the AI system DABUS as inventor were filed in multiple jurisdictions, including at the European Patent Office. The applicant argued that the invention had been created autonomously by DABUS.

According to the European Patent Convention (EPC) the designation of the inventor is a formal requirement which a patent application must fulfil according to Article 81 and Rule 19(1) EPC. Assessment of this formal requirement takes place prior to and independently from the substantive examination and involves no consideration as to whether the subject-matter of that application meets the requirements of patentability.

Key considerations

At the end of the oral proceedings, the Legal Board of Appeal had dismissed the appeal and orally provided the following reasoning:

• Under the EPC the inventor had to be a person with legal capacity. At least for this reason, the main request was not allowable.
• Regarding the auxiliary request, a statement indicating the origin of the right to the European patent under Article 81, second sentence, EPC had to be in conformity with Article 60(1)EPC.
• The EPO was competent to assess whether such statement referred to a situation which was encompassed by Article 60(1)EPC.

The written decision in case J 8/20 containing the Legal Board's detailed reasoning is now available. The written decision in parallel case J 9/20 will be issued soon.

Contact

Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office
boa-press@epo.org

This press release is a non-binding document for media use.