The European Patent Office has marked another important step in relation to the (non) legal recognition of Artificial Intelligence systems as actors within the industrial property legal environment by rejecting two patent applications designating Artificial Intelligence as the inventor.
On January 27, 2020, the European Patent Office (the “EPO”) published a decision establishing the reasons for its refusal to grant two European patent applications for which an Artificial Intelligence system was designated as the inventor. A group of scientists at the University of Surrey created an Artificial Intelligence system named DABUS (“AI” or “DABUS”), which independently and without any human contribution invented a fractal food container and a flashing light device for search-and-rescue operations.
DABUS is one of the most recent developments in the field of algorithms and increased computing power. DABUS is a form of connectionist AI: this kind of AI gets its name from the typical network techniques employed by most of the algorithms in this class. More specifically, connectionist AI uses the so called “Artificial Neural Network”, i.e. multiple layers of nodes (called “neurons”) that process input signals and combine them with intellectual abilities. Neural networks are simplified models of the brain, and experiments with models of this kind have demonstrated that these networks are able to learn skills such as facial recognition, reading, and the detection of simple grammatical structure. The key aspect of this category is that the user of the AI machine does not specify the rules that the AI has to follow; instead, the AI system figures out the rules using the data input by the user. In other words, the user provides input and sample output data, and then the AI statistically infers how to operate without further human intervention.
These features raise the question of how the current patent system will deal with this kind of innovative AI. The EPO had to face that issue when the individual applicant, Mr. Stephen Thaler, inventor of DABUS and owner of the AI machine in question (the “Applicant”), filed two European patent applications (EP 18 275 163 and EP 18275174 – collectively, “Patent Applications”) in October 2018 for two inventions made by DABUS.
The Receiving Section of the EPO noted that the applications for European patents did not indicate an inventor of the application subjects, and no separate inventor designation was filed. Consequently, it invited the applicant to remedy that oversight by designating an inventor, in compliance with Article 81 and Rule 19 (1) of the European Patent Convention (“EPC”).
Mr. Thaler filed a separate document indicating DABUS as the inventor and noted that he would acquire the right to the European patent as employer. The EPO did not accept this as a valid derivation of right. Mr. Thaler than resubmitted notification, this time claiming he had obtained the right to the European patent as a successor in title. In support of this, he explained that “the invention had been made by a machine and that the machine identified the novelty of its own idea before a natural person did”. Furthermore, he argued that “the machine should be recognized as the inventor and that the application, as the owner of the machine, was an assignee of any intellectual property rights created by this machine”.
According to Mr. Thaler, such legal fictio, which allocates the right to a patent from an AI machine to the inventor of the AI itself, is consistent with the purpose of the patent system, which incentivizes the disclosure of information, commercialization, and development of inventions. The Applicant further argued that “acknowledging machines as inventors would facilitate the protection of the moral rights of human inventors and allow for recognizing the work of the machine’s creators”  and that “accepting AI systems as inventors allows the applicant to indicate the truthful inventor. Not accepting AI systems as inventors would exclude inventions made by AI from patentability”.
Notwithstanding all of the arguments made by the Applicant, the Receiving Section stated that in designating an AI inventor the two Patent Applications contravened the provisions on inventor designation, namely Article 81 and Rule 19 (1) EPC, and that it had a crystal-clear and linear basis to reject the two Patent Applications.
First, the Receiving Section of the EPO argued that according to Article 81 EPC, a patent application must designate an inventor; if the applicant is not the inventor, then the patent application must contain an indication of the origin of the right to the European patent. Strict formal requirements regarding designation of the inventor are prescribed by law. Indeed, Rule 19 (1) EPC clearly requires that the name of the inventor be specified. These formal requirements enable inventors to exercise their rights and form part of their personality. According to the EPO, “in the EPC, the inventor’s position is safeguarded by giving them various rights”. These include (i) the right to be mentioned as inventors before the EPO; (ii) the right to be designated in the European patent application; and (iii) the right to be mentioned as inventors in the published European patent application.
Conversely, things (or AI machines, as in the case at hand) have no rights to exercise (and consequently, no names), because they have no legal personality comparable to that of natural or legal persons. This is the reason why the legal framework of the EPC does not provide for a non-person, i.e. neither a natural nor a legal person, as applicant, inventor, or in any other role in the patent granting proceedings, but only for natural persons, legal persons, and bodies equivalent to legal persons. Likewise, there is no legislation or consistent jurisprudence that has ever developed a legal fictio on the basis of which AI machines can be assigned legal personality. Based on all of the above, the EPO has inferred that “AI systems or machines cannot have rights that come from being an inventor”. In support of that conclusion, the EPO mentioned that many other patent offices (including those in the United States and Japan) have followed the same approach.
Second, the EPO was not convinced that the human Applicant had satisfactorily demonstrated how he had derived the right to the applications from the AI. Yet, the Receiving Section held that the statements indicating that the Applicant acquired the right to the European patent from DABUS, as its employer, and the subsequent correction to indicate succession in title, do not meet the requirements of Article 81 and Article 60 (1) EPC. Indeed, AI systems and machines cannot be employed, nor can they transfer any rights to a successor in title.
The reasoning underlying this is that AI has no legal personality and cannot, consequently, be party to an employment agreement, which is limited to natural persons. On the contrary, AI is not employed; instead, it is owned.
In relation to the second point, AI does not have rights. Consequently, it cannot be considered to own its output or own any alleged invention, and it cannot transfer any rights thereto. Thus, the owner of an AI system or a machine cannot be considered a successor in title. According to the EPO, “the owner of an AI system may, in accordance with national law, own the output of that system, just as an owner of any machine may own the output of that machine. However, the question of ownership of an output must be distinguished from the question of inventorship and from the rights connected therewith”.
Lastly, EPO concluded by clarifying that designation of the inventor is a formal requirement that a patent application must fulfill. Consequently, the assessment of these formal requirements is independent from and has no bearing on the substantive patentability requirements of the invention (e.g., the novelty requirement), as it takes place prior to and independently from the subsequent substantive examination of the application and makes no statement as to whether the subject of that application meets the requirements for patentability established by the EPC. Thus, the EPO did not devote any attention to analysis of the patentability of the Patent Application subjects and simply stopped at identifying the patent applications as failing to meet the formal requirements provided by the EPC.
In conclusion, the EPO has set a milestone for European patent legislation: an application that designates AI as an inventor does not meet the formal requirements established by the EPC. Mr. Thaler may appeal the Receiving Office decision; at present, there is no information about an appeal filed by the Applicant.
 Full description of the abilities of DABUS is available on Mr. Thaler’s website, accessible here. DABUS stands for “Device for the Autonomous Bootstrapping of Unified Sentience” and independently created the inventions at issue. According to the Artificial Inventor Project website “the inventions were conceived by a generative machine intelligence, judging merit of its own self conceived ideas based upon its own cumulative experience”.
 EPO, Grounds for the decision of January 27, 2020, European patent application EP 18 275 163, accessible here, paragraph 27. In support of such conclusion, the Receiving Section has mentioned some decisions issued by national court of various countries which have led to that effect: among others, English courts.