14 February 2022 by Maiwald Intellectual Property
The Legal Board of Appeal of the European Patent Office recently confirmed in the merged proceedings J 8/20 and J 9/20 that the inventor named in a patent application must be a person according to the European Patent Convention (EPC) and that an artificial intelligence system cannot be considered to be named here.
A designation of an inventor in terms of a non-person, an artificial intelligence system, is not permissible in patent grant proceedings before the European Patent Office, according to the Legal Board of Appeal. The Legal Board of Appeal upheld the decisions of the Receiving Section of the European Patent Office to reject applications EP 18 275 163 and EP 18 275 174, in which an artificial intelligence system called DABUS was named as inventor in the application forms.
At the end of the oral hearing of proceedings J 8/20 and J 9/20, the Legal Board of Appeal dismissed the appeal and in both cases orally gave the basic reasoning that according to the EPC the inventor must be a person having legal capacity and an AI system is not sufficient to be named as inventor. At least for this reason, the main request with the inventor designation DABUS was inadmissible. As far as the auxiliary request is concerned, a statement indicating the origin of the right to the European patent under Article 81, second sentence, EPC would had to be in conformity with Article 60(1) EPC.
Thus, the core issues for the rejection of the applications by the Legal Board of Appeal are based on the lack of legal capacity of the AI system and the failure to classify the AI system as a legal entity. Both the naming as inventor and the transfer of the rights to the invention and in particular the right to the patent to the applicant are considered impossible by the Legal Board of Appeal for an artificial intelligence system – in short an AI system – due to the lack of legal personality of the AI system.
The two rejected European patent applications are part of a worldwide patent family of patent applications with the DABUS system as inventor. DABUS is an AI system developed by Stephen Thaler the applicant of the patent applications. It is thanks to the applicant and his active filing activity that corresponding cases with the same subject matter are pending before a large number of patent offices worldwide. Thus, almost all important jurisdictions are occupied with the same questions on this exciting topic of artificial intelligence.
Also in the United States, Thaler v. Hirshfeld, and in the United Kingdom, Stephen L Thaler v The Comptroller-General of Patents, Designs And Trade Marks  EWHC 2412 (Pat), the patent applications of the same patent family have each been rejected due to the naming of the DABUS system as inventor, which was deemed improper.
With the present decision of the Legal Board of Appeal of the European Patent Office, another court has now followed the currently prevailing opinion that artificial intelligence systems do not have legal capacity and cannot be a juridical entity having and transferring rights and obligations. This is justified in the prevailing opinion by ensuring the primacy of humans.
Historically, the legal questions arising from the participation of artificial intelligence systems in daily life as well as in the patent application procedure before the patent offices of the world are reminiscent of the questions that arose in the course of the decision on the legal capacity of the civil law partnership in Germany, for which a recognition of legal capacity ultimately resulted from the practice and reality of legal transactions, NJW 2001, 1056. BGH: Rechtsfähigkeit der (Außen-)GbR. Judgment of 29.01.2001 – II ZR 331/00.
This recognition of reality was recently followed by a court in Australia, Thaler v Commissioner of Patents  FCA 879, and the Patent Office of South Africa, both of which considered the naming of a non-person, an artificial intelligence system, as inventor to be permissible.
In its decision for Germany, 11 W (pat) 5/21, the Federal Patent Court took a pragmatic approach, which also did not permit the sole naming of the AI system, but allowed a co-naming of the AI system without having to answer the question of the legal capacity of an AI system, which was probably considered too dogmatic.
The decision of the Legal Board of Appeal of the European Patent Office in the proceedings J 8/20 and J 9/20 unfortunately failed to react adequately to the changes and innovations in the field of artificial intelligence and is certainly not to be regarded as particularly progressive in a global comparison and in the context of digitalization, Industry 4.0 and other disruptive technologies.
Since artificial intelligence systems increasingly interact with humans in the course of inventions and the application of technology, these systems should also be granted legal personality, and naming them as inventors is certainly the simplest and most fundamental step here.