EPO refuses patent application with machine inventor

EU, UK

The EPO Board of Appeal have published their written decision in case J 8/20 in relation to the AI machine DABUS, finding that a machine cannot be an inventor for the purposes of applying for patents at the EPO.

A human user or owner of an AI involved in an inventive activity can continue to designate themselves as an inventor under European patent law. This decision does not therefore appear to impede the patenting of inventions resulting from AI assistance, demonstrating that the current legal framework for patents is capable of adequately dealing with AI inventions.

The position taken by the EPO in relation to AI inventorship mirrors that taken by the UK Court of Appeal, which has subsequently been re-affirmed in the recent UK Government Consultation Response on Artificial Intelligence. A machine is also not capable of being an inventor in both Australia (following the recent decision of the Full Court of the Federal Court of Australia) and the US. However, it should be noted that an appeal has been made to the US Court of Appeals for the Federal Circuit by the creator of DABUS, Dr. Stephen Thaler. That Court has heard the arguments relating to the matter but is yet to hand down a decision.

The position is different in South Africa, where the Companies and Intellectual Property Commission became the world’s first Patent Office to award a patent which named AI as the inventor of a product. It should, however, be noted that South Africa does not presently conduct substantive examination of patent applications in the way that the EU, the UK, Australia and the US do, so the registration could yet be challenged.  

Article co-authored by Alex Parkin, Trainee Solicitor at CMS.