A. Preliminary and formalities examination

In T 528/25 the appeal was directed against the decision of the examining division to reject the European patent application, since none of the requests on file contained a designation of the inventor that met the requirements of Art. 81 and R. 19 EPC. In J 8/20 the Legal Board of Appeal had dismissed an appeal against the refusal by the Receiving Section of the parent application, in which the applicant had intended to designate the artificial intelligence machine "DABUS" as inventor.

In the case at hand, the board first considered the legal framework regarding the designation of an inventor in the context of inventions made by using artificial intelligence (AI) as well as the reasons provided in J 8/20 (and J 9/20). The board concluded that, in principle, the designation of an inventor under the EPC is also possible for inventions developed using AI.

In the main request, the appellant had designated himself as the inventor in EPO Form 1002. However, in the Addendum to this form he had stated that "A machine called "DABUS" conceived of the present invention" and that the appellant was "not an inventor under traditional criteria", because "in the case of the present invention, the machine only received training in general knowledge in the field and proceeded to independently conceive of the invention and to identify it as novel and salient. If the training Dr Thaler provided DABUS had been given to a person, that person would meet inventorship criteria as inventor. In the present case, DABUS was not created to solve any particular problem, was not trained on any special data relevant to the present invention, and the machine rather than a person identified the novelty and salience of the present invention." The board held that the statements presented in EPO Form 1002, on the one hand, and in the Addendum, on the other, did not contain a clear and unambiguous designation of the inventor as required under Art. 81 EPC and R. 19 EPC. The formulations in the Addendum did not merely supplement the statement in EPO Form 1002 with information that the invention was devised by using an AI-machine, but rather called into question the statement in EPO Form 1002 that the appellant should be formally indicated as the (only) inventor. Therefore, the main request was not allowable.

The first and second auxiliary requests included the following information in the Addendum:

"A machine called "DABUS" had been caused to conceive of the present invention

Dr Thaler had caused a specific machine called DABUS to conceive of the invention disclosed and claimed in this European patent application. Dr Thaler owns DABUS, built DABUS, trained DABUS, and used DABUS. In the present case, DABUS was not created to solve any particular problem, was not trained on any special data relevant to the present invention, and DABUS identified the novelty and salience of the present invention. (...)"

The board noted that the decisive question was how the appellant's declarations as a whole were to be formally understood. In light of the explanations in the Addendum, it could not be established clearly and beyond doubt in the context of the formal examination under Art. 81 EPC and R. 19 EPC that (only) the appellant was to be designated as inventor.

Likewise, the board found that the third auxiliary request was not allowable under Art. 81 EPC and R. 19 EPC. This request comprised only EPO Form 1002 with the following wording: "Stephen L. Thaler der die künstliche Intelligenz DABUS dazu veranlasst hat, die Erfindung zu generieren." The board noted that EPO Form 1002 was to be used in cases where the applicant was not the (sole) inventor, i.e. where R. 19(1), second sentence, EPC applied. While this use of this form might be unobjectionable if only the name of the applicant appears, the use of EPO Form 1002 together with the statement "der die künstliche Intelligenz Dabus dazu veranlasst hat, die Erfindung zu generieren" made the designation of inventor unclear and inconsistent. The board further noted that the present case differed from the factual situation underlying the decision of the German Federal Court of Justice of 11 June 2024 (BGH X ZB 5/22), in which a corresponding wording on the form was accepted. The form "Erfinderbenennung", on which the German case was based, generally also applies if the applicant himself is the sole inventor. Furthermore, it was expressly added by filling in on page 2 of the form the statement that "Erfinder ist Anmelder", i.e. the inventor is the applicant.

The fourth auxiliary request was not admitted into the appeal proceedings according to Art. 13(2) and 12(6) RPBA, and the board dismissed the appeal.

In case T 2615/22, the parent application of the contested patent was filed on 10 March 2015, i.e. more than twelve months after the filing dates of the priority applications P1 and P2. Upon a request for re-establishment of rights by the then applicant of the parent application, the Receiving Section decided on 14 January 2016 to restore the priority period.

The opponent-appellant argued that the patent was not entitled to the priority of P1 and P2. It considered that the Receiving Section was not competent to take that decision and that it did not correctly apply the all-due-care criterion in its decision. It contended this decision in the application proceedings should be set aside in the opposition appeal proceedings.

The present board did not see any reason to deviate from T 1482/21 (relating to the patent granted on the parent application) according to which the Receiving Section was competent to take the decision of 14 January 2016, and that this decision was final and that this prevented other departments of the EPO such as an opposition division or a technical board of appeal which decide on questions of priority in other, subsequent proceedings from reviewing and overturning the Receiving Section's decision. In accordance with these conclusions, the present board agreed that the opposition division had to acknowledge the Receiving Section's decision to grant the request for re-establishment of rights in respect of the priority period.

As to whether a positive decision of the Receiving Section on re-establishment of rights was open for review in subsequent opposition/appeal proceedings, the board did not consider convincing the opponent’s arguments. As set out in T 1482/21 if the Receiving Section grants a request for re-establishment of rights in respect of the priority period, the applicant is not adversely affected under Art. 107 EPC. As the applicant is the only party to the proceedings before the Receiving Section, a favourable decision on such a request is not appealable and becomes final immediately..

The nature of opposition proceedings and the case law on res judicata were discussed in detail during the oral proceedings before the board. The board recalled that opposition proceedings are not designed to be a continuation of examination proceedings (G 3/14). This also meant that, legally speaking, opposition proceedings must not be understood as any kind of appeal proceedings in relation to the proceedings before the Receiving Section and the examining division. Accordingly, an opposition division does not have the power to review and set aside a procedural decision taken in these proceedings. Opposition is not a legal remedy in the classical sense and it does not have the effect of transmitting the case to a superior tribunal. Not all possible irregularities in an application can be reviewed in opposition proceedings, not even all substantive ones, but only those which are listed as grounds for opposition in Art. 100 EPC. An examination of the same substantive patentability requirements – which qualify as grounds for opposition – may be undertaken by different departments in different proceedings, and there is indeed no binding effect in that regard. The Receiving Section's decision on re-establishment of rights does not concern the assessment of a substantive requirement which qualifies as a ground for opposition. It concerned a purely procedural matter decided in ex parte proceedings in the then applicant's favour.

The fact that a purely procedural matter may have ramifications on whether a patent exists, does not change its qualification as a procedural matter. This may result in a patent coming into existence which may otherwise not have been granted. Nevertheless, such possible irregularities in the patent grant procedure do not qualify as a ground for opposition and therefore cannot be reviewed in opposition proceedings or subsequent opposition/appeal proceedings.