Decision on the role of AI in patent applications (Ref. X ZB 5/22)
Can an AI be recognized as the inventor of a patent?
Only natural persons can be inventors within the meaning of Section 37 (1) of the German Patent Act (PatG). This ruling was made by the Federal Court of Justice (BGH) in its judgment (X ZB 5/22) on June 11, 2024, thus providing clarity on the role of artificial intelligence (AI) in German patent law.
The subject of the proceedings was the AI system DABUS(Device for the Autonomous Bootstrapping of Unified Sentience), which generated an innovative food or beverage container with a fractal profile and a flashing light for emergencies.
DABUS was developed by Dr. Stephen Thaler and has been named as an "inventor" in several patent applications since 2019. These applications have raised the question worldwide as to whether an AI can be recognized as an inventor. The designation of inventor submitted on the official form contained the following information: "DABUS - The invention was independently generated by an artificial intelligence".
However, the German Patent and Trade Mark Office (DPMA) rejected this on the grounds that only natural persons can be designated as inventors under Section 37 (1) PatG. In the appeal proceedings, Dr. Thaler requested, among other things, that the inventor designation be allowed with the addition"c/o Stephen L. Thaler, PhD" in order to emphasize the contribution of artificial intelligence.
The Federal Patent Court (BPatG) rejected this, but finally accepted the wording"Stephen L. Thaler, PhD, who caused the artificial intelligence DABUS to generate the invention". According to the Federal Patent Court, this wording was not objectionable as it contained the indication of a natural person in the field provided and it was also noted that the inventor was also the applicant. Furthermore, the additional reference to artificial intelligence did not violate Section 7 (2) PatV.
The BGH now emphasizes the following guiding principles in its ruling:
a) An inventor within the meaning of Section 37 (1) PatG can only be a natural person. A machine system cannot be designated as an inventor even if it has artificial intelligence functions.
b) The designation of a natural person as inventor is also possible and necessary if a system with artificial intelligence has been used to find the claimed technical teaching.
c) The designation of a natural person as inventor in the official form provided for this purpose does not satisfy the requirements of Section 37 (1) PatG if at the same time it is requested that the description be supplemented by the indication that the invention was generated or created by artificial intelligence.
d) The addition of a sufficiently clear designation of the inventor by stating that the inventor caused an artificial intelligence to generate the invention is legally irrelevant and does not justify the rejection of the application pursuant to Sec. 42 (3) Patent Act.
In addition, the BGH emphasized that there are currently no systems that produce inventions entirely without human preparation or influence. A human contribution that significantly influences the overall success of the invention is required in order to be recognized as an inventor. However, the BGH does not seem to attach decisive importance to the nature and intensity of this human contribution. The BGH emphasized that it is reasonable and possible for the applicant to name (at least) one human inventor, even if an AI has made the main contribution.
In practice, this means that inventions developed with the assistance of an AI system must continue to be attributed to a natural person. The use of AI tools therefore does not change the fact that the human developer is considered the inventor.
For applicants, this means ensuring that only natural persons can be named as inventors, even if AI systems contributed significantly to the invention or the technical teaching was largely influenced or generated by an AI. The role of inventor is therefore initially reserved for a natural person.
This judgment could also have implications for other jurisdictions and/or international patent applications, although it remains to be seen how case law will develop in this regard, particularly given the rapid advances in AI technology.