The European Patent Office ("EPO") has finally been given, and has taken, an opportunity to pin its colours to the mast on the question of how it would interpret its legal provisions, as they stand, on the naming of inventors in cases where inventions are asserted as having been created by artificial intelligence (AI).
This has come about in two recent decisions by the Receiving Section of the EPO (hereinafter simply referenced as "the EPO"), given in oral proceedings, in which the EPO rejected two patent applications (publications numbers EP3564144 and EP3563896) on the basis that an AI system, named DABUS, not a natural person, was identified as the inventor of the inventions that were the subjects of the respective applications. The EPO did so essentially on formalistic grounds and true to the EPO's characteristic textually-bound interpretation practice, but nevertheless with substantive basis in law.
Thus, in the context of European Patent Convention and its rules, as they stand, the debate on whether or not AI can be named as inventors for the purpose of pursuing patent protection has, subject to the possibility of appeal, been decided.
Regrettably, the decision taken by the EPO provides no clarity on the question of the identity of the person(s) to identify as inventor(s) in such circumstances, in lieu of the identification of AI. Applicants for patents for AI-created inventions are therefore left with no clear path forward in respect of naming inventors in their patent applications. A legitimate concern that has been raised in this regard is that the EPO may have ended up creating a de facto exclusion of AI generated inventions from valid patentability, as discussed below in more detail.
Naming of inventors
It is a universal requirement in patent law for a valid patent to name the true inventor(s) of the invention that is claimed in the patent. Failure to do so is a serious matter, as it can be viewed as an injury, and in some cases as fraud, against the true inventor(s). In fact, in many countries a failure to identify and name inventor(s) accurately in a patent may, directly or indirectly, provide basis for invalidation of the patent. This takes into account that the right to pursue patent protection for an invention originates from, and therefore by default lies with the true inventor(s). Usually, proof of the transfer of the right to pursue patent protection for an invention, from the inventor to the applicant (where the applicant is not the inventor), is therefore required in support of a patent application for the invention.
An argument can be made that the current patent laws of most nations and patent treaty organisations at least imply, where they do not expressly state, that inventors should be natural persons.
For example, in the case of the EPO, Rule 19 of the Rules to the European Patent Convention (EPC) requires an inventor to be identified in terms of a "...family name..." and "...given names..." and Rule 21(1) provides for an incorrect designation of an inventor to be corrected only with the consent of the "...wrongly designated person..." (emphasis added). The EPO boards of appeal (e.g. in J 7/99) have also solely referred to inventorship in the context of natural persons and the rights that naturally attach to them. Underlying these rules is the general requirement in Article 81 of the EPC that "[t]he European patent application shall designate the inventor" and "[i]f the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent". While this article itself does not expressly state that an inventor must be a natural person, the rules lead one to expect that.
In the USA, the position appears to be more definite, in that the United States Code defines an "inventor" as the individual who invented or discovered the subject matter of the invention and indicates that an "individual" includes every infant member of the species homo sapiens who is born alive, at any stage of development.
In South Africa, while there is no definition of "inventor" in the South African Patents Act, a patent application is accompanied by a form containing a declaration as to the identity of the inventor, which declaration includes language to the effect that the inventor(s) is/are "...the person(s)..." (emphasis added) identified in the form, again implying that an inventor ought to be a natural person. This is also supported, to some extent, by various forms required in support of a patent application, requiring inventors to be identified by their "...full names...".
Against the backdrop of these, and other, common and statutory law provisions, the question that remained, in the case of the EPO, and that remains in other jurisdictions, was/is whether, taking into account the potentially serious consequences of incorrectly naming inventors in a patent application, naming AI as inventor would be accepted by patent offices, i.e. whether patent offices would, in light of the rapidly evolving technological landscape, be willing to interpret their patent laws to the effect that inventorship may extend beyond natural persons, in cases where it is an applicant's assertion that an invention was created not by a natural person, but by artificial intelligence.
It is at the outset submitted that, in light of the potential consequences of an error in naming inventors, whether intentionally or not, it would in the absence of guidance not have been, or would not be, irrational of an applicant for a patent application to name a machine as an inventor, where the machine has, in the applicant's view, contributed to the gist of the invention for which patent protection is sought.
Before the EPO
Dr Stephen L. Thaler filed the abovementioned patent applications, in his own name, with the EPO. In doing so, he left blank the field in which the inventor needs to be identified.
In response to subsequent objections to the applications from the EPO, for the omission of inventor details (which, as noted above, is required in terms of Article 81 and Rule 19 of the EPC), Dr Thaler indicated that the inventor of the claimed inventions was an AI system that he had named "DABUS" and that he had acquired from DABUS the right to the invention by virtue of employment of DABUS. That response was later supplemented with a statement to the effect that Dr Thaler is the successor in title of DABUS.
Dr Thaler included in his response a request for oral proceedings on the matter, which request was granted by the EPO. The EPO's summons to oral proceedings confirmed an objection to the effect that the applicant failed to comply with abovementioned Article 81 and Rule 19(1), in that the applicant did not provide, as designation of the inventor, the required family name, given names and full address "...which must be those of a natural person". The nature of the objection was such that if it was not overcome, the application would be rejected.
The EPO's decision and its basis
After hearing the applicant, who advanced various arguments on why the application should be accepted citing the AI system as inventor, including:
- the applicant's obligation to name the true inventor,
- the possible inadvertent creation of a de facto ground of unpatentability in not recognising AI as inventors,
- unfair discrimination against mononymous persons in requiring a family name and given names to be provided,
- non-requirement for legal competence for rights to come into existence and pass to a legal successor in certain circumstances (e.g. in the case of minors), and
- that a specific provision in the EPC Rules (requiring a family name and given names for an inventor to be supplied) cannot be used to interpret a general provision in the EPC itself (that the true inventor should be named),
the EPO issued a decision that the application be rejected.
The EPO discussed various provisions of the EPC, and their history, in justifying its decision, but ultimately its reasoning in rejecting the applications can be explained at the hand thereof that, as stated in the Decision, the family name and full names required to be included in identification of an inventor must be those of a natural person.
The EPO reasoned that names given to things cannot be equated to names given to natural and legal persons, since the names of natural and legal persons are central to the determination of their legal identity and, as such, the exercising of their legal rights, whereas Al has, at present, no rights in law because they have no legal personality comparable to natural persons. The name of an AI system is therefore not associated with any legal identity, in contrast to the name of a natural or legal person.
The EPO confirmed that legal personality is assigned to a natural person as a consequence of their being human, and to a legal person based on a legal fiction, recognised in law. Where non-natural persons are concerned, legal personality is only given on the basis of legal fictions, which must be recognised in law. The EPO went on to note that such legal fictions are, in law, either directly created by legislation, or developed through consistent jurisprudence.
In the case of Al inventors, there is no legislation or jurisprudence establishing such a legal fiction. It follows that Al cannot have rights that come from being an inventor, such as the right to be mentioned as an inventor or to be designated as an inventor in the patent application.
General remarks on the decision
The EPO's abovementioned reasoning, and therefore the decision, cannot be easily disagreed with, if at all. As the EPO pointed out, the law that binds it, in its current form, does not provide any basis for any rights of any kind to be afforded to entities for which legal personality has not yet been recognised in legislation or jurisprudence. AI falls into this category of entities and therefore have no legal personality that allow rights to attach to them independently. Thus, there is no legal basis for a right to file a patent application for an invention, created by AI, to attach to AI on the basis of it having created the invention.
So, to whom does such a right attach? Regrettably, as noted earlier, there is no clarity in this regard. A practical problem therefore now arises for applicants seeking to patent AI generated inventions before the EPO. Citing AI as inventor would cause such applications to fail during the formality examination stage of a European patent application. Citing a natural person as inventor would allow the application to pass this stage, and even for a patent to be granted on the application (considering that the EPO does not investigate the accuracy of the naming of inventors, as expressly provided for in the rules to the EPC). However, the validity of such a patent may then be vulnerable for incorrect naming of inventors. That said, it is so that only in limited circumstances is an incorrect identification of an inventor materially consequential post-grant, and often challenges based thereon must be raised by the aggrieved person. Again, here, the question arises who the aggrieved person would be if AI is omitted as inventor, considering that AI would not have legal identity that would give it standing to be aggrieved and that there is no clarity who the aggrieved party would be in its stead.
As things stand, there appears to be no alternative, therefore, for applicants of EPO patents for AI-created inventions to make their best efforts in identifying those individuals who worked most closely with an AI system in causing that system to create an invention, and naming such individuals as inventors, if they wish to have any chance of successfully pursuing patent protection before the EPO.
Remarks on the South African context
Substantively, there is no basis to assert that the legal position in South Africa would differ from that at the EPO. Nothing in South African law recognises legal rights as attaching to anything other than natural and legal persons, and nothing in our law has thus far recognised AI as either of these. As such, they remain inanimate objects, unrecognised by law in a form other than as the property of a natural or legal person. There is therefore no substantive basis in South African law for AI to be recognised as an inventor, as the source of the right to pursue patent protection.
In respect of naming AI as inventor one must differentiate between the formality examination that is conducted by the South African Patent Office (the "Patent Office") and the substantive grounds for patent invalidity that may be relied on by any person to apply for revocation of a granted patent.
In the formality examination, the Patent Office, like the EPO, does not examine whether the named inventors are, in fact, the true inventors. It merely checks whether the inventor field in the application documents has been filled out. There is no precedent of a required standard in this regard, no view can therefore be expressed on whether the Registrar would object to the citing of AI in the inventor fields.
Further, the Patent Office also checks whether, where the inventor is not the applicant, proof of the applicant's right to apply, to the satisfaction of the Registrar, has been supplied by the applicant. A failure to do so would elicit an objection, and in this regard applicants may face difficulty where they had named an AI system as inventor.
In respect of post-grant revocation proceedings, relevant grounds for revocation relating to inventorship include that the person who applied for the patent was not entitled to apply, that the application for the patent was made in fraud of the rights of another person, and that a material misrepresentation was made on the declaration form executed by the applicant.
- the naming of AI as inventor, if not objected to by the Patent Office, may provide basis for revocation on the basis of non-entitlement, considering that no rights came into existence, due to the absence of legal identity on the part of the AI inventor, that could have placed the applicant in an entitled position to apply for a patent; and
- the naming of an inventor other than AI, where an AI system made an inventive contribution, may provide basis for revocation for material misrepresentation on the declaration form.
In the context of South African patent law and practice, the current decision of the EPO emphasises that AI-created invention patent applicants are stuck between Scylla and Charybdis in respect of the identification of inventors in their patent applications.
On the one hand, naming a natural person who is, after all, not the true inventor of the invention, may render the eventually granted South African patent susceptible to attack on material misrepresentation. On the other hand, naming the true inventor of an invention as AI can result in the patent application being attacked for lack of entitlement.
To advise applicants as to an appropriate course to take in such circumstances is difficult. It is believed that, ultimately, it would be more cautious, as suggested above in respect of the situation at the EPO, to name natural persons as inventors, since at least then the existence of a right to apply for patent protection can be asserted. Where such persons are not identified, no such assertion can validly be made.
In the interim, the question of who to identify as an inventor in AI generated inventions therefore remains one for the courts to decide and may be debated for some time still.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.