Can a machine be an inventor?

The European Patent Office Legal Board of Appeal had reached a decision on 21^st December 2021 regarding the patentability of two applications, EP18275163.6 and EP18275174.3, both in the name of Dr Stephen Thaler. Dr Thaler had previously filed the applications naming an artificial intelligence, “DABUS”, as the inventor.

The Board of Appeal announced its ruling that the initial decision by the Receiving Section of the European Patent Office (EPO) to reject the two applications on the grounds that an artificial intelligence system cannot be an inventor was confirmed. The Board of Appeal further rejected the request that Dr Thaler had the right to the applications by virtue of being the owner and creator of the AI system.

The Board of Appeal has recently published its decision in full, which can be seen here. In it, the Board of Appeal has stated that an AI lacked legal personality. As such, while the AI may be capable of inventing, it is not able to apply for a patent for its invention or own a patented invention. Furthermore, the AI is not capable of transferring the rights of a patent or patent application, countering Dr Thaler’s argument that he derived the right to the application by virtue of being the AI’s employer.

In light of Articles 60(1) and 81 of the EPC, the Board of Appeal agreed with the assessment of the EPO Receiving Section that the inventor has to be a person with legal capacity, as that is the ordinary meaning of the term “inventor”.

What does this mean going forward for AI inventors? The Board of Appeal in their published ruling has acknowledged that while an AI or machine cannot be the designated inventor per se, under European patent law there is no mechanism to prevent a user or owner of a device involved in an inventive activity to simply designate themselves as the inventor.

An applicant is free to acknowledge the contributions of any AI inventor in the description of their application.

If you have any questions on the implications of AI with respect to your Intellectual Property, or would like more information on how best to protect your innovations and get the most out of your business in the most cost-effective manner, please do not hesitate to contact one of our advisers, either by email at mail@bailey-walsh.com or by telephone on 0113 2433824.