Last year, the EPO made a loud noise by rejecting a patent application over an invention produced by an AI machine named DABUS. The legal representatives of the DABUS machine (hereinafter referred as “DABUS”) filed an appeal against the decision on March 13, 2020 and made the following submission in their statement of grounds of appeal before the Board of Appeal on May 27, 2020. A copy of the statement is downloadable from here.
Particularly, the appeal was against the decision of the Receiving Section of the EPO rejecting the application for not designating inventorship to a natural person under Article 81 and Rule 19 EPC.
DABUS filed his reply in the following sections:
- Preliminary observation on the procedure before the Receiving Section followed in this case – This section primarily highlights the procedural defect in handling the case of designating AI machine as an inventor before EPO;
- General Submission on the Decision of the Receiving Section – It highlights the vagueness of the rejection by the Receiving Section of EPO;
- Paragraph by Paragraph remarks on the Reasons for the Decision – This section brings out the contemporary approach of the patent attorneys to bring the AI machine within the ambit of an inventor recognised in the European Patent Convention (EPC); and
- Concluding Remarks
Brief explanation of the points argued by the applicant
- DABUS’s application was not given the statutory time period of 16-month for filing the designation of inventorship as per Rule 60 of EPC. The deadline was February 17, 2020, however, the application was rejected before the deadline. Accordingly, DABUS claimed that curtailing the term is unjustifiable in light of EPC and the BOA’s decision of J1/10.
- The grounds of the appeal are the applicant’s first opportunity to reply the detailed decision (facts and evidence) of the Receiving Section, as EPO failed to timely provide a reasoned decision. This failure leads to a breach of the provisions of Article 113 (1) EPC.
- DABUS submitted that naming a natural person as an inventor for the invention made by AI machines is a moral prejudice and it should not be encouraged. Hence, not naming the designated inventor, even though it was an AI machine, in the publication of the EP application, is a violation of Rule 20.
- The applicants filed two applications with similar issues, which were consolidated by the Receiving Section for hearing, but two separate decisions were given. Thus, the applicant has to bear two separate costs for filing the appeals in both the cases. Contrary to this practice, UKIPO issued a single appealable decision when the counterpart UK applications were consolidated for hearing.
- DABUS filed that the Receiving Section has the right to decide the matter only on the formal requirement. However, the present matter was decided on the substantive patent law and fundamental legal principles, which do not fall under the formal requirements. Although the Receiving Section has reasoned the differences between the formal requirements and the substantive requirements of patentability, but DABUS emphasised that the actual basis of the decision was not the formal requirements.
- The patent attorney highlighted that the inventions involving AI have a high social and economic importance. Denial of such applications merely on the formal requirements like ‘designation of inventorship’ could lead to false claims of inventorship in the name of humans. Accordingly, the applicant emphasized the requirement to revisit the patent law on the basis of studies by the eminent scholars, comments of the UKIPO’s controller, responses by research organisations, and stakeholders.
- The online filing system of the EPO does not allow applicants to correctly file Form 1002 for AI machines as inventors. Hence, there was originally a mistake with the records. But it was clearly due to the technical limitations of the online filing system.
- The applicant has stressed on one point again and again that the Receiving Section has decided the question of the substantive law under the formal requirements.
- The Receiving Section has erred in its reasoning that the inventors should have the legal rights under EPC. On the contrary, the applicant submitted that the rights of the inventor are nothing but a factual matter to show that there is an inventor to devise an invention.
- The applicant has emphasised that by rejecting the application for naming AI machine as invention, the Receiving Section would, in turn, encourage false naming of human inventorship when the inventor is an AI machine. A couple of case laws were cited to support the claim that having an inventor for a patent application is important but it is not necessary to have a natural person as an inventor.
- The applicant opposed the Receiving Section’s understanding that there is lack of evidence that the AI system would be incapable of analysing the disclosure in the patent application with respect to what it has created, what has been disclosed, how much it has contributed, and in what manner.
- It is further pointed out that the concept of inventors as natural persons was included in EPC for two reasons: one is to preclude the employer from not naming the real inventor, even if the inventor has devised the invention under the employment agreement, and the other reason is that EPC was drafted in 1960, therefore, too early to think about inventions by AI machines. Also, the EPC rules were discussed once to include legal persons as inventors, however, did not end up formulating it. This does not give any stand not to allow AI machines as inventors.
- The Receiving Section interpreted Article 62 in favour of only having a natural person as an inventor. The applicant contradicted this interpretation by submitting that said article does not limit only to a natural person, but it means the actual deviser of the invention.
- The applicant interpreted Article 81 and Rule 20 as the true meaning of said provisions is to designate the actual inventor; no matter if it was an AI machine or a natural person.
- The applicant has submitted that the requirement of Article 19(3) of EPC does not confer any rights on the inventor or the applicants to be waived by them, as per Article 19(4). Thus, the communication of details to the inventor is solely EPO’s requirement.
- The Receiving Section’s reasoning that Rule 20 (1) mandates the EPO to publish the name of the inventor and the inventor can waive it. But the applicant said that EPO has no conclusive proof of such incapability of the AI machines – as similar to point 11 above.
- One of the important reasoning given by the Receiving Section under Article 60 allows the transfer of rights from the inventor to a successor in title and the AI system cannot transfer his rights under any law at this point of time. The applicant replied that said provision is not an ultimate provision on the rights to an invention and it cannot exclude invention from patenting. The applicant strongly submitted that the national laws of the Member States provide other mechanism for the transfer of rights on the invention.
- Further, the Receiving Section considered “inventorship” to be a “right in law” and in order to ascertain if it can be availed by a legal personality in addition to a natural one, it referred to the Study on European Civil Law Rules in Robotics for the Policy Department for Citizen’s Rights and Constitutional Affairs, Polish Civil Code, etc. In this regard, the Applicant has argued that the question of AI being an inventor is not a matter of right but is a matter of fact. Rights follow the fact of inventorship and not vice versa. Even by going with the findings of the Receiving Section, though AI may not be entrusted with the rights over an invention for it not being a natural person, but this is different from that of the inventorship. Not attributing this inventorship to the AI who has actually produced the invention is also not morally correct. Therefore, even by attributing inventorship to the AI, the rights to the invention can be enjoyed by the Applicant who is the owner, deviser, and the operator of the AI.
- The foreign cases relied on by the Receiving Section do not seem to create a parlance in this regard. As an example, regarding the University of Southampton’s Applications, it was held in view of the UK patent law that the actual deviser of the invention should be attributed as the Inventor. Further, in Yeda Research v Rhone-Poulenc, the UK House of Lords held that the first step is to find the actual inventor and then find out if anyone else can be entitled to any of the incidental rights. Therefore, holding that the inventor must be a natural person as per the International standards does not seem to be true. Even by saying that majority of the EP contracting states put forth the requirement of the inventor being a natural person, there seems to be a room for the case otherwise.
- The Receiving Section has gone much further than assessing the formal requirements of designating an inventor. In fact, it was not required to decide upon the issues of the requirement of natural inventor in law, conferring rights to an inventor, or barring AI from being designate as an inventor.
- One of the grounds of the Appeal states that going with the EPC, it can be said that the Receiving Section is not expected to verify the accuracy of the designation of the inventor. If the Applicant would not have been this much honest, the Receiving Section would have accepted the application.
Conclusively, the Appeal is aimed at pointing out that inventorship should not be a condition for the grant of patents. There might be a situation where, in an application filed for an AI devised invention, an Applicant would simply put a name of a human in the place of inventor and prevent it from being refused. This might not be ethical or rather fundamentally incorrect in some circumstances. Not only this, it may also mislead a third party, denying that third party the opportunity of challenging inventorship. As there is no express provision empowering the patent office to question the applicant or the inventor about how the invention was arrived at, this should be left for the third party to challenge. The Patent Offices should rather focus on what they are expected to do. They should determine the patentability of the inventions and not just reject inventions on the question of inventorship(being only a formal requirement). Let us see what BOA has to say on this issue.