A patent application designates two distinct categories of people: the inventor(s) on the one hand, and the applicant(s) or patent holder(s) on the other.
Under European law, as stated in Article 60(1), first paragraph, of the European Patent Convention (EPC), there is a link between these two categories of persons: the right to a patent is determined based on the designation of the inventors. Starting from the inventors, the right to the patent is established by examining any potential obligations of transfer of rights (most often derived from national law) to which these inventors may be subject.
The vast majority of inventions have always been created using tools: paper and pencil to put an idea down on paper, CAD software to represent a complex part in 3D, a 3D printer to create a prototype, a wind tunnel to assess its performance, and so on. However, the emergence of increasingly autonomous Artificial Intelligence ("AI") tools raises questions about the concept of inventorship. Who would consider a mould used to create a prototype or a wind tunnel as an inventor? Nevertheless, “AI”’s ability to autonomously generate content sets it apart from traditional tools used by designers. Could this justify granting “AI” the status of an "inventor"? If so, how could the link required by Article 60(1) be established with a rightful owner?
Recently, the European Patent Office (EPO) refused to recognize the software "DABUS" (short for "Device for the Autonomous Bootstrapping of Unified Sentience") as the inventor in two patent applications. The position of the Board of Appeal is very clear: "Under the EPC, the designated inventor has to be a person with legal capacity" (§4.3.1 of J0008/20) and "A machine is not an inventor within the meaning of the EPC" (§4.3.9 of J0008/20).
When a device is involved in an inventive activity, the EPO's Board of Appeal suggests that it is not prohibited for the user or owner of the device to designate themselves as the inventor: "The Board is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law" (§4.6 of J0008/20).
At present, a large majority of patent offices and courts have also rejected patent applications that designate “AI” as the sole inventor.
Thus, for an invention created using artificial intelligence, a European patent can only be granted if at least one human inventor is designated. Assuming, however, there would be one! It would therefore be advisable to document, in a laboratory notebook, the activity of the human inventor, even if it involves interaction with “AI”.
From a procedural standpoint, the EPO will, as always, conduct no verification of the quality of the inventor. However, a European patent may be revoked (Article 138(1)(e) EPC) after grant if the holder did not have the right to obtain it under Article 60(1) EPC. Case law has so far considered that only an aggrieved third party may invoke this ground for the invalidation of a European patent. For the same reasons related to legal capacity, we are unlikely to see an “AI” challenging a European patent anytime soon on the grounds that it was not designated as the inventor! The future will tell whether the Unified Patent Court (UPC) will continue to follow the established case law or allow other third parties to challenge the validity of a European patent for which the right to the patent is claimed by the owner or user of an “AI”.
Credit: Geoffroy COUSIN
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