Tag Archives: EPO

The EPO rejects two patent applications designating AI system DABUS as inventor

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Abstract:

The EPO rejected two European patent applications, which both named an AI system as inventor, on the ground that the designation of inventorship did not fulfill the requirements of the EPC accepting only human persons as inventors.  The EPO states in the decision that AI systems or machines cannot be holders of the rights conferred to an inventor by the EPC.

A closer look at the two patent specifications reveals that these do not contain any evidence that AI was plausibly involved in the inventive process of devising the claimed inventions.

The recent decision of the European Patent Office (EPO) to reject two patent applications for failure to name a natural person as inventor has attracted attention recently. Earlier this week the reasons for the decisions to refuse EP 3 564 144 and EP 3 563 896 were published on the EPO register website.

The identical applicant of both patent applications claims that the true inventor of the inventions disclosed in the applications is an Artificial Intelligence (AI) system called DABUS, a machine intelligence system developed by the applicant based on artificial neural networks allegedly being able to perform creative work. The applicant designated “DABUS” as the sole inventor of both patent applications and stated that he had obtained the right to the European patent from DABUS as a successor in title.

The EPO refused both applications under Art. 90(5) of the European Patent Convention (EPC) for formal reasons, because the requirements of Art. 81 EPC

“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.” 

and Rule 19(1) EPC

“(1) The request for grant of a European patent shall contain the designation of the inventor. However, if the applicant is not the inventor or is not the sole inventor, the designation shall be filed in a separate document. The designation shall state the family name, given names and full address of the inventor, contain the statement referred to in Article 81 and bear the signature of the applicant or his representative.” 

were not met. These requirements were interpreted by the EPO in such a way that the designated inventor has to be a human person. Mentioning the name of a machine thus does not fulfill the requirements.

In defense of his request to designate the AI system DABUS as the inventor, the applicant relied in particular on the following arguments:

  • The Al system DABUS would be the actual deviser of the invention underlying the application. It would be a fundamental principle of patent law that the applicant must indicate the true inventor of the invention.
  • Rule 19(1) EPC would not require that the inventor is a human person.
  • Allowing an AI system or machine to be designated as inventor would be in line with the purpose of the patent system, namely to incentivise disclosure of information, commercialisation and development of inventions.
  • Not accepting Al systems as inventors would exclude inventions made by Al from patentability, contrary to Articles 52-57 EPC.

The EPO based its decision to reject the application essentially on the following reasons:

  • The legal framework of the EPC provides only for natural persons and legal persons to act within the system created by the EPC. Non-persons, i.e. neither natural nor legal persons do not have any role in proceedings before the EPO. In the context of inventorship reference is made only to natural persons. This indicates a clear legislative understanding that the inventor has to be a natural person.
  • Names given to things may not be equated with names of natural persons. Names given to natural persons serve not only the function of identifying them but enable them to exercise their rights and form part of their personality. Things have no rights which a name would allow them to exercise.
  • Under the EPC, the inventor has particular rights including the initial right to the European patent (which she can assign to a third party) and the right to be mentioned and designated as inventor on the publications of the application and the granted patent. Al systems or machines have at present no rights because they have no legal personality comparable to natural or legal persons. Legal personality is assigned to a natural person as a consequence of their being human, and to a legal person based on a legal fiction. Such legal fictions are either directly created by legislation, or developed through consistent jurisprudence. In the case of Al inventors, there is no legislation or jurisprudence establishing such legal fiction. It follows that Al systems or machines cannot have rights derived from being an inventor, such as the right to be designated as an inventor in the patent application. AI systems or machines also cannot transfer any rights such as the right to a European patent to a successor of title.

Consequently, the patent application was refused, because the designation of inventor filed by the applicant naming the machine “DABUS” as inventor does not meet the requirements of Art. 81 and Rule 19(1) EPC recited above. The decision is open to appeal by the applicant.

The EPO in accordance with Rule 19(2) EPC did not verify the claim that the AI system DABUS in fact is the inventor of the claimed invention. In the following we take a brief look at the two disclosures itself to check whether the AI system plausibly could be the inventor of the alleged inventions.

The first invention titled “Device and method for attracting enhanced attention” describes a device looking like a torch or pocket lamp having an LED light source 6 emitting light pulses having a fractal structure:

Claim 1 as amended after receipt of the search report from the EPO reads as follows:

  1. A device (2) for attracting enhanced attention, the device comprising:

(a) an input signal of a lacunar pulse train having characteristics of a pulse frequency of approximately four Hertz and a pulse-train fractal dimension of approximately one-half generated from a random walk over successive 300 millisecond intervals, each step being of equal magnitude and representative of a pulse train satisfying a fractal dimension equation of ln(number of intercepts of a neuron’s net input with a firing threshold)/ln(the total number of 300 ms intervals sampled); and

(b) at least one controllable light source (6) configured to be pulsatingly operated by said input signal;

wherein a neural flame is emitted from said at least one controllable light source as a result of said lacunar pulse train.

According to the description (paragraph [0017]), these particular light pulses defined in claim 1 should attract particular human attention:

“Even to the naked eye, and without the use of an anomaly detector, fractal dimension 1/2 pulse streams preferentially attract the attention of human test subjects. The most attention-grabbing aspect of such streams is that the ’holes’ or lacunarity between pulses occur as anomalies in what would otherwise be a linear stream of events. In other words, the pattern is frequently broken, such anomalous behavior possibly being detected by the TRN within the human brain as inconsistencies in the established arrival trend of visual stimuli. In contrast, should fractal dimension drop significantly below 1/2, the frequency of anomalous pulses drops, making them less noticeable to humans should either attention or gaze be wandering.“

The allegedly inventive light pulses having a fractal structure, however, are not generated by AI or machine learning but are simply received as an “input signal”. It is therefore not apparent at all, where the alleged machine intelligence system DABUS could have contributed to the invention. No evidence is submitted for the involvement of AI or neural networks or the like in conceiving the invention as defined by the above-recited claim 1. The claim features are not the result of a machine learning or other AI process. The allegation that DABUS is the real inventor seems not to be justified by the disclosure of the patent application.

The same applies to the second invention relating to a food or beverage container having a wall formed of fractal structures.

These fractal structures allegedly allowing coupling a plurality of such containers by inter-engagement, however, are likewise not described to be generated by AI. Again, a contribution of AI to the alleged invention is spurious.

The intention behind the two patent applications may actually be marketing-driven, namely to obtain a patent as an indication that the DABUS system indeed is able to perform creative tasks. The title “Device and method for attracting enhanced attention” then is aptly chosen.

IP5 offices CS&E pilot project: 500 PCT applications over the next 2 years will receive within 9 months an International Search Report jointly prepared by the five largest IP offices (CN, US, EP, JP, KR)

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The world´s five biggest IP offices (collectively named IP5) started on July 1, 2018 a Collaborative Search and Examination (CS&E) pilot project to allow applicants of PCT applications upon request to receive an early search report including a provisional written opinion on patentability drawn up jointly by examiners of the Chinese, US, Japanese, Korean and European patent offices. This allows applicants to get an early assessment of the chances of success of a patent application based on a broader perspective of different prior art databases, search strategies, languages, and examiner expertise.

The applicant-driven procedure (see official illustration) starts with a request filed by the applicant with the Receiving Office, which will be transmitted to the International Bureau (IB) and the competent International Searching Authority (ISA), which has to be one of the IP5 offices.

IP5 pilot

The competent ISA will then assesses whether the requirements (see below) are met and will notify the applicant and the IB whether or not it accepts the request for participation in the pilot. The competent ISA (now main ISA) then carries out a search, prepares a search report and a provisional opinion on patentability. These are made available to the “peer” examiners at the other four IP offices through a safe ePCT-based platform. The peer examiners will provide the main examiner with their contributions, taking into consideration the provisional international search report and written opinion of the main ISA. The final international search report and written opinion will be established by the main examiner after consideration of the contributions from the peer examiners, which is in turn submitted to the applicant or its representative, if possible, within the time limit under Rule 42.1 PCT, i.e. within nine months from the earliest priority date of the PCT application.

Each of the participating offices will admit about 100 PCT applications to the pilot throughout a two-year period starting on July 1, 2018 such that in total 500 PCT applications will be participating. A common set of quality and operational standards will be applied by all collaborating offices. The CS&E pilot project is scheduled to continue until June 1, 2021 and will then be jointly assessed by the participating offices.

During the pilot phase the cost of the jointly prepared search report and written opinion is that of a normal PCT chapter I search at the competent ISA. The applicant thus gets the additional search and examination results from the other four offices for free. If the CS&E will be implemented as a regular product, however, higher fees are to be expected.

The requirements for participating at the CS&E pilot project are the following:

  • The request for participation in the pilot must be submitted using the standard form and filed together with the international application at the Receiving Office or the IB.
  • Until languages other than English are accepted into the pilot, the participation form and the international application must be filed in English.
  • One applicant cannot file more than 10 requests for participation in the pilot at a same main ISA.

If the pilot turns out to be successful, the collaborative work of peer examiners of the IP5 offices could bring a huge benefit for patent applicants. It may also allow a glimpse at a future international patent system harvesting international cooperation and standardization to avoid duplicated work and bringing faster, more cost-effective procedures for the applicants. Earlier knowledge about the patentability of an application also brings benefits to the industry as a whole and contributes to make the patenting process itself more transparent and efficient.

twitter: @patentlyGerman

 

Patent protection for computer system architecture: EPO Appeal Board Decision T 1658/15 “Universal merchant platform for payment authentication”

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Author´s headnotes:

  1. In the assessment of inventive step, the business person is just as fictional as the skilled person of Article 56 EPC. The notion of the skilled person is an artificial one; that is the price paid for an objective assessment. So it is too with the business person, who represents an abstraction or shorthand for a separation of business considerations from technical. A real business person, a real technically-skilled person, or a real inventor does not hold such considerations separately from one another.
  2. Outsourcing a commercial transaction such as the authentication of an online purchase transaction to a different computing device cannot in all cases be abstracted to a purely business activity because it may encompass technical aspects such as the use of plug-ins and servers.
  3. If a prima-facie technical prejudice existed at the relevant date against the outsourcing of a commercial transaction such as the authentication of an online purchase transaction to a different computing device, then this outsourcing involves an inventive step.

The patent application allowed by the decision T 1658/15 of the Technical Boards of Appeal of 29 November 2016 relates to online payment systems.

To complete an online purchase transaction in such systems, the buyer has to be authenticated. The online store passes information about the intended transaction to the credit-card company, which handles the task of ensuring the buyer is entitled to use the chosen payment instrument, and which informs the online shop of the outcome of the authentication procedure. The technical implementation of this authentication involves the server of the online shop communicating with the computer of the credit-card company. This communication is according to the prior art handled by a “plug-in” in the merchant server, a piece of software specific to the particular authenticating authority and to the needs of the authentication process. Different plug-ins are provided for different payment instruments. The update and maintenance of these different authentication plug-ins requires substantial resources of the operator of the merchant server.

To overcome these problems, the claimed invention in the decided case provides a separate computer called “merchant authentication processing system” (MAPS) handling the interface functionality with the authenticating servers, which was previously handled by the corresponding plug-ins of the merchant server. The invention thus replaces the three-machine prior art (buyer computer, merchant server, authenticating server) with a four-machine system (buyer computer, merchant server, authenticating server, and merchant authentication processing system). The invention thus differs from the prior art in the system architecture, namely replacing the several plug-ins for different payment instruments at the merchant server by a separate merchant authentication processing system. The advantage achieved by the invention is to reduce the service costs for the merchant. In addition, the operator of the merchant authentication processing system can offer this service to several different merchants and thus enjoy economies of scale for operating the authentication interface service for the authentication process.

According to the established case law of the EPO (following T 0641/00: Two identities/COMVIK) only technical features of an invention comprising technical and non-technical features can contribute to the inventive step. The technical features are separated from the non-technical features. The non-technical features are implied as being known to the skilled person and only the technical features are compared with the closest prior art. It is then assessed which technical problem is solved by the distinguishing technical features and whether or not this technical solution of the technical problem would have been obvious for the skilled person at the priority date of the application.

This approach often results in a novel and non-obvious technical concept to be divided into a novel and non-obvious concept itself, which is deemed non-technical, lying in the field of business or organization, and the distinguishing technical features, which are regarded only as straightforward technical (mostly software) implementation, which is obvious for the technically skilled person leading to the refusal of the patent application. The “Comvik-Approach” thus often unduly reduces the chances of success of computer-implemented inventions compared to inventions in other technical fields.

The decision discussed here provides an approach to overcome this problem: As the skilled person is a hypothetical construction for assessing inventive step, so should be the the business person or organisation expert providing the non-obvious, but non-technical concept. This business person in the Board´s view “represents an abstraction or shorthand for a separation of business considerations from technical” and as such should – different from a real business person – not have any technical knowledge or capability for technical considerations. The Board states:

“Thus, the notional business person might not do things a real business person would. He would not require the use of the internet, wireless, or XXXX processors. This approach ensures that, in line with the Comvik principle, all the technical matter, including known or even notorious matter, is considered for obviousness and can contribute to inventive step.

Similarly, the notional business person might do things that a real business person would not, such as include requirements that go against business thinking at the time – a sort of business prejudice, as is alleged in this case (see below). If this were not the case, business requirements would need to be evaluated and would contribute to inventive step, contrary to the Comvik principle.”

Applying these principles to the concrete case, the Board finds “that the transaction authentication in the present case cannot be abstracted to a purely business activity because it has aspects such as the use of plug-ins and servers.” Therefore, “the decision to centralise the plug-ins in a separate server that can be accessed by several merchant servers, in order to simplify installation and maintenance and reduce load, should be considered a technical matter”.

The Board considered that it might have been obvious for the skilled person seeking to simplify the merchant server or the installation or updating of plug-ins to locate the authentication interface functionality at a separate server that could be accessed by various merchants’ servers. On the other hand, at the priority date of the application a number of technical considerations spoke against relocation of the plug-ins, as increased latency, increased bandwidth requirements and security considerations. On balance, the Board concluded, there existed “a prima facie case for technical prejudice” against relocating the plug-ins to a separate server and the invention thus is to be regarded as involving an inventive step.

According to the Board´s decision, the selection of a favorable system architecture for a particular technical issue is thus to be regarded as a patentable invention if its technical implementation is not obvious even if such system architecture may be regarded obvious from a business perspective.

The technical problem solved by the claimed invention in the decided case can thus not simply be formulated as “to reduce the maintenance and update requirements of the merchant server” as this would be not a technical, but a commercial problem. The business person intending to solve this commercial problem would in turn formulate for the technically skilled person the technical problem “to provide a technical solution to reduce maintenance and update requirements of the merchant server”. The skilled person would thus consider – independently from any business considerations – different options to solve this technical problem, including amendments at the level of the merchant server itself as well as changes of the system architecture. As the Board found, the provision of the particular system architecture of the claimed invention, namely to provide a separate merchant authentication processing system handling the interface functionality with the authenticating servers, was not obvious for the skilled person at the priority date.

This decision may also prove to be helpful for inventors seeking to obtain patent protection in Europe for distributed or serverless applications based on distributed-ledger or blockchain technologies if the application of these technologies for the particular task was not technically obvious at the respective priority date.

CRISPR EP Update: Berkeley EP patent application close to grant

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EPO by sporst

While the CRISPR-cas9 patent fight between the Broad Institute (“Team Zhang”) and the UC Berkeley (“Team Doudna”) in the US saw its first hearing at the USPTO´s Patent Trial and Appeal Board on December 5, the UC Berkeley has only a few days later received good news from the European Patent Office. An Office Action from December 8, 2016 indicated allowability of broad claims for its European patent application (publication number EP 2 800 811). Claim 1 reads as follows:

1. A method of modifying a target DNA, the method comprising contacting the target DNA with a complex comprising:

(a) a Cas9 polypeptide and
(b) a single-molecule DNA-targeting RNA comprising:
(i) a DNA-targeting segment comprising a nucleotide sequence that is complementary to a sequence in the target DNA, and
(ii) a protein-binding segment that interacts with said Cas9 polypeptide, wherein
the protein-binding segment comprises two complementary stretches of nucleotides that
hybridize to form a double stranded RNA (dsRNA) duplex,
wherein said two complementary stretches of nucleotides are covalently linked
by intervening nucleotides,
wherein said contacting is in vitro or in a cell ex vivo; and
wherein said modifying is cleavage of the target DNA.

A restriction to either eukaryotic or procaryotic cells seems not to be present. The contacting of the target DNA to be modyfied by the method, however, according to the claim has to take place in vitro or in a cell ex vivo. 

A notice of allowance from the EPO (communication under Rule 71(3) EPC) can be expected soon.

 

Disclaimer: Neither I myself nor the patent firm Betten & Resch, of which I am a partner, is involved in any patent cases relating to CRISPR-cas9 technology.

(picture by sporst)