DABUS AI Again Denied European Patent

by Dennis Crouch

The European Patent Office (EPO) has again rejected Dr. Stephen Thaler’s patent application that attempted to name his artificial intelligence system DABUS as an inventor.  The EPO examining division’s decision reinforces the foundational principle that inventors must be natural persons under European patent law. Article 81 of the European Patent Convention (EPC) requires a mandatory designation of inventor, and according a prior precedential decision that went against Thaler, the inventor “must be a natural person.” The examining division emphasized that this requirement stems from the interconnection between Article 81 EPC (designation of inventor) and Article 60(1) EPC (right to European patent).

Article 81: Designation of the inventor — The European patent application shall designate the inventor. If 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.

Article 60: Right to a European patent — (1) The right to a European patent shall belong to the inventor or his successor in title. . .

Of course, neither of these articles expressly state that the inventor must be human, but the implication from Article 60(1) in particular is that the inventor is someone with the capability of holding title.

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• DabusEPO2024
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The EPO’s Legal Board of Appeal previously reinforced this interpretation in its December 2021 decision (J 8/20 linked above) dismissing Thaler’s appeal. In that decision, the Board explained that the term “inventor” under the EPC must be interpreted according to its ordinary meaning – “a person who invents” – and found no basis for departing from this plain language interpretation. While acknowledging that AI-generated inventions may be patentable under Article 52(1) EPC, the Board held that this does not change the requirements for inventor designation and origin of rights. The Board rejected both Thaler’s main request (designating DABUS as inventor) and his auxiliary request (stating no inventor but claiming rights as DABUS’s owner), finding that neither complied with Articles 81 and 60(1) EPC. Notably, the Board determined that even for AI-generated inventions, a statement explaining the origin of patent rights must identify a valid legal basis under Article 60(1) EPC – either inventorship by a natural person or succession from such an inventor. Simply owning an AI system that created an invention was deemed insufficient to establish succession rights under the EPC.

The newest decision walks through the notion that DABUS itself was initially listed as the inventor. When that failed, Dr. Thaler tried various alternative approaches, including stating he was “unable to identify the inventor” and later claiming inventorship “by virtue of being the owner of the AI system.” Each attempt was rejected because the applications contained internally contradictory statements about inventorship. The examining division explained the contradiction clearly: “In the present case the Addendum and the amended description contradict the statement filed in Form 1002, making the designation of inventor unclear, and not allowing the examining division to establish who is designated as inventor (himself or the artificial intelligence system DABUS) and whether the applicant has the right to the invention.” This ambiguity was fatal to the application under Article 81 EPC. Perhaps most notably, the examining division rejected the applicant’s argument that Rule 19(2) EPC (which states that the EPO does not verify the accuracy of the inventor designation) should limit their review to simply checking whether a human is named. The division explained that “According to Article 81 and Rule 19(1) EPC, the applicant must designate the inventor and according to Article 97 EPC the application as a whole must meet the requirements of the EPC.”

If Thaler simply named himself as inventor, the whole dispute would seemingly end because the EPO does not investigate whether the inventorship claims are actually correct.  In a creative legal argument, Dr. Thaler highlighted his US duty of candor as a reason why he cannot personally claim inventorship. Under US patent law, applicants have an ongoing duty of candor to the USPTO requiring disclosure of all material information related to patentability, including accurate inventorship information. Violations of this duty can lead to severe consequences, potentially rendering a patent unenforceable under the inequitable conduct doctrine. Thaler’s argument suggested that forcing him to name a human inventor for the EPO would place him in an impossible position – either violate his US duty of candor by making a false inventor declaration there, or fail to obtain European patent protection by truthfully disclosing DABUS as the inventor.

The EPO Board firmly rejected this argument, holding that “Any duties that the applicant may have towards other authorities as regards domestic applications are independent of the assessment of the application for compliance with the requirements of the EPC.” This reflects a fundamental principle that each patent system operates independently according to its own laws, even when examining the same invention. Obligations under one system cannot be used to modify or circumvent the requirements of another.  At the same time, it is worth noting that the various national and international patent systems are part of a singular worldwide  cooperative system. This cooperation occurs at multiple levels – from bilateral office arrangements like the Patent Prosecution Highway to foundational treaties like the Paris Convention, Patent Cooperation Treaty (PCT), and TRIPS Agreement that create a coherent international framework for patent protection.