EPO Board of Appeal Decision J0008/20 on AI Inventor DABUS - Commentary by Robert Jehan

On 6 July 2022 the European Patent Office's Legal Board of Appeal published its reasoned decision J0008/20 explaining why it refused Dr Thaler's appeal at the end of the oral proceedings held on 21 December 2021. The decision establishes very important principles in law in relation to the patentability of inventions created by AI systems, that is AI‑generated inventions. 

I represented Dr Thaler in the EPO proceedings as part of the DABUS team and set out my commentary on the decision below and in the attached article.

While the decision rejected Dr Thaler's appeal, the decision accepted some of the fundamental legal points raised. The Legal Board of Appeal even suggests how an applicant can obtain a European patent for AI-generated inventions. Some of those findings are applicable, for reasons I set out below, to other jurisdictions and arguably to the laws of most countries in the world.I do not agree with some of the reasoning of the Legal Board of Appeal and explain why below. However, as there are numerous appeals currently pending in other jurisdictions, I am deliberately not addressing a number of issues pertaining to these cases, including for instance the question of Dr Thaler's entitlement to the DABUS inventions. I therefore restrict my comments to the relationship between the law as set out in the European Patent Convention and the laws of the contracting States.

In summary, the Legal Board of Appeal held that:

1. Article 52(1) EPC is not limited to human‑made inventions. How an invention is made apparently plays no role in the European patent system, and it is therefore arguable that AI-generated inventions are patentable under Article 52. [paragraph 4.6.2]
2. The issue with AI-generated inventions does not lie in a substantive condition for patentability but in only a formal requirement, which the Board held requires an applicant to name a human inventor. [paragraph 4.6.3]
3. It would be disproportionate to deny protection to patentable subject matter for failing to fulfill such a formal requirement.[paragraph 4.6.3]
4. The requirement to name a human inventor can be overcome by naming, for example, the owner of the AI system even if the invention was made autonomously by the AI system, that is the owner did not make any inventive contribution and makes a statement to this effect in the application. [paragraph 4.6.6]