Following on from the decision at the DABUS appeal hearing in December, the EPO has now issued the formal decision providing detailed reasoning. Not many surprises here over the preliminary opinion the Board of Appeal issued before the hearing in December. To recall, the decision turned on the formal requirement to file a designation of inventor and, if the applicant is not the inventor, how the applicant obtained the right to the application (for example, by employment or an agreement). There were two requests the Board had to consider: 1) the initially filed designation of inventor naming the machine referred to as DABUS as the inventor and 2) a statement that there I no human inventor and that the applicant obtained the right to the grant of a patent as DABUS’ owner. The Board rejected both: there is no problem with transparency or fairness that would need to be fixed and no justification for the Board to ignore the formal requirements of the EPC.
On the main request, that DABUS be named an inventor, the Board found that both the plain meaning of the word and the related provisions of the EPC required an inventor to be a person. A machine cannot be an inventor. Therefore, DABUS cannot be named an inventor. Transparency and public interest in knowing who the inventor is does not come into it. This is because an inventor can, in any case, ask that their details be kept secret by the EPO.
The Board then turned to the alternative request, in which the appellant indicated in the designation of inventor that there is no human inventor because the invention was made by a machine and explained that the applicant had the right to the grant of a patent by owning DABUS. The appellant argued that since there is no inventor, none needs to be named on the designation of the inventor. The Board agreed with this point but noted there was still a need to indicate how the applicant obtained the right to the grant of a patent, as the applicant and inventor were not the same. However, the only way an applicant can derive this right from the inventor is as a successor in title to the inventor. There being no inventor, the corresponding requirement was not met.
For balance, the EPO considered two potential objections to their findings. The first one was that as a result of the decision, there are inventions that comply with the substantive requirements of the EPC, in particular novelty and inventive step, that cannot be patented. The Board found this indeed to be the case. This is because how an invention was made plays no role in the European patent system. There could be patentable inventions (Article 52 EPC) for which no right to a patent was provided under Article 60 EPC. The second potential objection was that the requirement for an applicant who is not an inventor to indicate how the right to the grant of a patent is a formal one. This formal requirement can be said to serve no purpose when there is no inventor. It follows that the Board could consider that the lawmaker only intended for it to apply to situations when there is a human inventor and hence rule that it does not apply to situations where there is no inventor.
The Board found that a weakness common to both these objections is that they would require the Board to entirely ignore a formal requirement of the EPC. In this case, the Board was not prepared to do so. Firstly, because there is no problem of equal treatment or transparency or fairness since patent protection for machine-generated inventions is, in any case, available under the EPC. The applicant could designate himself as the inventor and, to address transparency and fairness, explain in the description of the application how the invention was made. This could be done without contravening any provisions of the EPC. Secondly, it is for the lawmaker to assess the EPC and determine if a real problem exists. There may be different possible solutions, and it is not for the Board to select one.
And that was that: the appeal was dismissed. So what is next – will DABUS file its own patent application as the applicant? It remains to be seen. In the meantime, for fans of EPO procedural law, the decision has such nuggets as what happens if an application dies and is then revived between an oral appeal hearing and the written decision, the admissibility of third-party observations on procedural matters, various alleged procedural violations, and more. As to inventions made by AI, the Board's reasoning suggests that there may not be an issue after all, as long as a human is involved in the process somehow. This point has been picked up by the IPKAT in their blog post. I will be thinking about it more in a future edition …