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.