AI has no personality: EPO rules that an AI machine cannot be an inventor in patent applications

Hogan Lovells

In the patent grant proceedings for two European Patent Applications, the EPO has ruled that an AI machine cannot be named as an inventor in a Patent Application. Doing so does not comply with the requirement to designate the inventor according to Art. 81 EPC and leads to the rejection of the application under Art. 90 (5) EPC. According to the EPO, only a natural person can be designated as inventor. Machines on the other hand have no legal personality and are therefore unable to have any rights.

The Applicant of two European Patent Applications indicated an AI machine as the inventor, stating that the machine has made the invention and that the Applicant wanted to indicate the truthful inventor. It was argued that the applicant obtained the right to the European patent as a successor in title of the inventor, i.e. the machine.

Decision of the EPO

The Receiving Section of the EPO rejected the patent applications because they did not meet the formal requirements under Article 81 EPC, Rule 19(1) EPC. By declaring a machine to be the inventor, the applicant had not complied with these requirements. The EPO argued that an inventor according to Article 60 EPC may only be a natural person. The legislator's intentions and the fact that the EPC allocates certain rights to an inventor were used as justification in support of the argument. AI machines are inanimate objects and as such are unable to have any kind of personality or bear rights whereas only natural or legal persons have the ability to bear rights (or obligations).

Likewise, AI machines are not able to transfer any rights to a successor in title, as was submitted by the Applicant. Given that machines have no legal personality and cannot have any legal title to a right to a patent, there is nothing they could transfer to a successor in title.

The EPO has emphasized that the formal requirement of designating an inventor does not block the invention from patentability. However, assessing formal requirements takes place prior to the substantive patentability examination. Likewise, if an invention meets the requirements of Articles 52-57 EPC, this has no influence on whether or not the formal requirements are met.

Analysis

The EPO's decision is in line with the existing legal framework. As the law stands, there seems to be no possibility that an AI machine could be considered to be an inventor in the sense of the EPC and national patent law. The UKIPO has issued a similar decision in a parallel national case (BL O/741/19).

Given current developments in AI technology and the expectation that in the future even more inventions will be the product of AI, it remains to be seen whether a revision of the legal framework such as the EPC is required in order to keep up with the reality of how inventions are made. However, this also raises more fundamental civil law issues such as the general question of who or what is able to be a bearer of rights and obligations. Any specific provisions in patent law would need to be compatible with general principles of civil law.

Next steps

The applicant in the cases discussed above has the opportunity to file an appeal to the EPO Boards of Appeal within two months of notification of the decisions. According to public statements made by the Applicant, he intends to file an appeal.

As an immediate consequence, Applicants should refrain from designating an AI machine or system as the inventor in a Patent Application. The EPO has made clear that only the designation of a natural person meets the requirements of Articles 81 and Rule 19 (1) EPC. It remains an open question if the owner or developer of an AI can legitimately be named as the inventor if the AI has made the invention autonomously. It is to be expected that the jurisprudence in the coming years will provide some clarification for these open issues.

The International Association for the Protection of Intellectual Property (AIPPI) has also decided to deal with the inventorship of inventions made using an AI as part of its 2020 study questions (see here for more details).

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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