The EPO's Legal Board of Appeal holds that the designated inventor must be a person with legal capacity

2021-12-21EPO

Decisions of the Legal Board of Appeal J 8/20 and J 9/20 (21 December 2021), Designation of inventor / DABUS, Board 3.1.01, on European patent applications EP 18 275 163 (Food container) and EP 18 275 174, dismissing the appeals from the Receiving Section's refusals of 27 January 2020

The Legal Board of Appeal of the European Patent Office announced on 21 December 2021 that it had dismissed Stephen Thaler's appeals in J 8/20 and J 9/20 and confirmed the Receiving Section's refusal, under Article 90(5) of the European Patent Convention, of two applications that designated the artificial intelligence system DABUS as inventor. The applicant's main request maintained the designation of the machine. His auxiliary request stated that he had the right to the European patent by virtue of being the owner and creator of the machine. On the main request, the Board held that under the Convention the designated inventor has to be a person with legal capacity, so the designation fails under Article 81, first sentence, and Rule 19. On the auxiliary request, the Board held that a statement of the origin of the right to the patent under Article 81, second sentence, has to be in conformity with Article 60(1), and that the Office is competent to assess whether the statement describes a situation covered by Article 60(1), and it refused the auxiliary request. The Board refused the request to refer questions to the Enlarged Board of Appeal and stated that the written decision with detailed reasoning will follow.

What it changesFor European applications the question is closed at the Board level, and the rule is simple: designate the natural persons who directed and selected the machine's work, and keep the machine out of the designation form. The second holding matters more for day-to-day practice than the first. The Office will examine the statement of how the applicant acquired the right to the patent, and ownership of the tool that produced the invention is not a recognized origin of that right. Companies that acquire inventions from employees through employment law or assignment should check that the statement on Form 1002 names a transaction the Convention recognizes, employee invention law or an assignment from the named natural person, rather than a description of who owns the software. In-house inventorship questionnaires for model-assisted work should capture which person conceived the claimed solution so that the designation and the statement of origin point to the same human being and the same transaction.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

This is general information about a published decision, agency guidance or piece of legislation. It is not legal advice and does not create an attorney-client relationship. Items concerning offices outside the United States are reported for information only and are not counsel on the law of those countries.