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European Patent Office and Federal Court of Australia confirm: No Right to a Patent with only a “Machine” (AI) as Inventor

Date: 12 October 2022

In a decision of December 21, 2021 (J 8/20, see EPO - J 0008/20 (Designation of inventor/DABUS) of 21.12.2021), a Legal Board of Appeal ruled that a machine is not to be considered as an inventor, the designation of an inventor also having the purpose to identify a legal basis for entitlement to a patent application.


An Artificial Intelligence (AI) was regarded as neither a natural person nor as having any legal capacity. However, it was regarded as possible (not prohibited) to describe in the application how an invention was made, also whether an AI was involved. An invention as such us defined in Art. 52(1) EPC was not regarded as being limited to a human-made invention.


However, based on Art. 60(1) EPC, only a natural person was acknowledged to have the right to a European Patent; the right to an invention was given only vested to the inventor; and such a right (derived from a natural person as inventor) could be separately transferred to an applicant already before a European application is actually filed.


The Board saw no reason not to allow a natural person having derived an invention from an AI device to name himself as inventor.


This confirms that an AI cannot be named as an inventor in a European patent application, see also our former information in Artificial Intelligence designated as patent inventor in South Africa and Australia  and EPO deprives Artificial Intelligence of IP rights? 


Note that in the meantime a higher court in Australia (the Federal Court of Australia) also confirmed that an AI cannot be an inventor and thus overruled the first instance court decision – this is in line with the EP decision and also the situation in the USA, and one of the reasons was that the origin of entitlement to the grant of a patent lies in human endeavour – an AI cannot be the basis of such a right. The overruling decision (dated April 13, 2022) of the Federal Court of Australia can be found here: Commissioner of Patents v Thaler [2022] FCAFC 62 (fedcourt.gov.au)


Our services of course also include advice on and handling of inventions where an Artificial Intelligence contributed to the invention.


The question of rights and duties by an AI may be highlighted by considering who can be charged with responsibility if a liability issue arises based on an activity of an AI. Can an AI be liable for damages it causes? How is it compensating or penalized? This may be a vivid illustration of the issues arising with the “personalization” of an AI in a matter other than naming an inventor …