Press Communiqué on decisions J 8/20 and J 9/20 of the Legal Board of Appeal

21 December 2021

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Today, the Legal Board of Appeal announced its decision to dismiss the appeal in cases J 8/20 and J 9/20. The Legal Board of Appeal confirmed the decisions of the Receiving Section of the European Patent Office to refuse the applications EP 18 275 163 and EP 18 275 174, in which an artificial intelligence system called DABUS was designated as inventor in the application forms. 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.

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 cases J 8/20 and J 9/20 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 inventions 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 EPC 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.

The Receiving Section of the EPO refused both applications. In its decisions it considered the designation submitted by the applicant not to be consistent with Article 81 EPC for two reasons. Firstly, it concluded that only a human inventor could be an inventor within the meaning of the EPC. For this reason, designating a machine as inventor did not comply with the requirements set out in Article 81 and Rule 19(1) EPC. Secondly, the Receiving Section was of the opinion that a machine could not transfer any rights to the applicant. The Receiving Section considered therefore that the statement that the applicant was successor in title because they owned the machine did not satisfy the requirements of Article 81 EPC in conjunction with Article 60(1) EPC.

Key considerations

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

  • Under the EPC the inventor had to be a person with legal capacity. For this reason at least, 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 with a detailed reasoning will be sent to the parties in due course and will subsequently be publicly available in the decisions database of the Boards of Appeal.

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.

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