6. Examination of formal requirements
Overview
6. Examination of formal requirements
Under Art. 90(3) EPC, if the patent application is accorded a date of filing, the EPO examines, in accordance with the Implementing Regulations, whether the requirements set forth in the following provisions have been satisfied:
- Art. 14 EPC, concerning the language of the European patent application (see chapter III.F.1.);
- Art. 78 EPC, concerning the requirements of a European patent application (see in this chapter IV.A.6.1.);
- Art. 81 EPC, concerning the designation of the inventor (see in this chapter IV.A.6.2.);
as well as any requirements laid down in the Implementing Regulations, and, where applicable;
- Art. 88(1) EPC, concerning claiming priority (see in this chapter IV.A.8.);
- Art. 133(2) EPC, concerning general principles of representation (see chapter III.V.);
- any other requirement laid down in the Implementing Regulations (see in this chapter IV.A.6.3.).
Under Art. 90(4) EPC, where the EPO notes that there are deficiencies which may be corrected, it shall give the applicant an opportunity to correct them. If any deficiency noted under Art. 90(3) EPC is not corrected, the patent application shall be refused unless the EPC provides a different legal consequence (Art. 90(5) EPC).
In J 18/08, the Legal Board held that, where an application was refused under Art. 90(5) EPC, the deficiency on which the refusal decision was based could be corrected at the appeal stage. From this it followed that if an appeal was filed against such a refusal under Art. 90(5) EPC, the board had to examine whether the deficiency noted had been corrected or not. The Legal board explained that the present case was different from the situation where the non-observance of a time limit automatically led to the application being deemed to be withdrawn. In such a case the legal consequence automatically ensued when an act required within a specific time limit was not performed, without any decision to be taken concerning the refusal of the application.
In J 11/20 the applicant appealed a decision of the Receiving Section refusing their application under Art. 90(5) EPC in conjunction with R. 58 EPC. The sole reason for the refusal was that the four amended drawings filed by the applicant to remedy formal deficiencies in the application documents were not in agreement with the application documents as originally filed and, despite the invitation by the Receiving Section, the applicant had not corrected this deficiency in due time. The Legal Board observed that when the appeal was filed, the formal deficiency had already been remedied, albeit late, with the filing of the correct drawings. Considering that the ground for refusal of the application under Art. 90(5) EPC had been remedied, the Legal Board established that the Receiving Section should have granted interlocutory revision in accordance with Art. 109 EPC.
- T 0528/25
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.