6. Examination of formal requirements
6.2. Designation of the inventor
Designation of the inventor is governed by Art. 81 and R. 19 EPC. The inventor is to be designated in the European patent application. If the applicant is not the inventor or is not the sole inventor, the designation must contain a statement indicating the origin of the right to the European patent (Art. 81 EPC).
Under R. 19 EPC, the request for grant of a European patent shall contain the designation of the inventor. For the requirements of the designation of inventor, see also the notice from the EPO dated 22 February 2021 concerning the amendment of Rules 19 and 143 EPC (OJ 2021, A12). Amended R. 19 EPC entered into force on 1 April 2021 (CA/D 11/20, OJ 2021, A3).
If the designation of the inventor is not made in accordance with R. 19 EPC, the EPO shall inform the applicant under R. 60(1) EPC that the application will be refused unless the designation is made within sixteen months of the date of filing of the application, or, if priority is claimed, of the date of priority. This period is deemed to have been observed if the information is communicated before completion of the technical preparations for the publication of the patent application.
Rule 21(1) EPC (R. 19(1) EPC 1973) requires consent to the rectification of a designation of inventor to be given by a "wrongly designated" person. In J 8/82 (OJ 1984, 155), the Legal Board held that a person already named whose name is not to be cancelled from the designation is not a "wrongly designated" person within the meaning of the Rule and his consent to the addition of the name of another person is not required. (The Legal Board's finding in this decision on the allocation of responsibility between the Receiving Section and examining division for making a decision concerning such requests was overruled in J 5/01, see in this chapter IV.A.5.5.3).
The issue which arose in J 1/10 was whether the legal position regarding designation of the inventor is changed by early publication of the European patent application at the applicant's request under Art. 93(1)(b) EPC, which can mean that the European patent application as published does not tell the public who the inventor is. In the Legal Board's judgment, early publication under Art. 93(1)(b) EPC did not affect the time period under R. 60(1) EPC for filing the designation of the inventor. If it did, it would shorten the 16-month period for filing that designation. However, there was no legal basis for assuming any connection between early publication and a reduction in the 16-month period. Nor could this be inferred from R. 60(1) EPC or the provisions governing the procedure for rectifying deficiencies (Art. 90(3) and (4) EPC).
The questions addressed by the Legal Board in J 8/20 (and in J 9/20 which is almost identical) were, firstly, whether an applicant could designate an entity which was not a natural person as the inventor (Art. 81, first sentence, EPC); secondly, what were the requirements of the statement indicating the origin of the right to the patent (Art. 81, second sentence, EPC) and, thirdly whether and to what extent the EPO could examine and object to the designation of inventor and the statement indicating the origin of the right to the patent filed under Art. 81 EPC.
Regarding the first question, the Legal Board held that the designated inventor had to be a person with legal capacity. This was the ordinary meaning of the term inventor. With the secondary legislation (R. 19 EPC) supporting this interpretation, it was not necessary to resort to the travaux préparatoires. The purpose of the provisions dealing with the inventor and its designation was primarily to confer and to protect the rights of the inventor, to facilitate the enforcement of potential compensation claims provided under domestic law, and to identify a legal basis for entitlement to the application. Designating a machine without legal capacity could serve none of these purposes. Furthermore, whether the designation of the inventor was published or corrected depended only on a unilateral decision of the inventor. Third parties had no rights in this regard. These provisions were not reconcilable with the theory that the public had a right under the EPC to know who the inventor was.
As to the second question, the Legal Board held that Art. 81, second sentence, EPC referred to the "origin of the right to the European patent". Art. 81 EPC thus established a link to Art. 60 EPC, where the right to a European patent was mentioned and provided for. Art. 60(1) EPC envisaged two ways to acquire the right to a European patent: either by developing the invention ("inventor") or by deriving the right from the inventor ("successor in title"). In view of the normative link between Art. 60(1) and Art. 81 EPC, only a declaration which identified the origin of the right in a manner consistent with Art. 60(1) EPC could be considered to comply with the EPC. Therefore, the statement that the appellant had derived the right to the European patent as owner and creator of the machine did not meet the requirements of Art. 81, second sentence, EPC in conjunction with Art. 60(1) EPC.
As to the third question, the Legal Board explained that, under Art. 90(3) EPC, the EPO shall examine whether the requirements in Art. 81 EPC have been satisfied. This examination was only a formal assessment. It was not necessary to assess whether, according to the relevant law, the applicant was de jure entitled to file the application, or if the relevant transaction or relationship was valid and really occurred. Such an examination was consistent with the principles set out in Art. 60(3) EPC and R. 19(2) 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.