Artificial Intelligence and Patent Applications

German Federal Court of Justice confirms that only a natural person can be an inventor

In its decision of June 11, 2024, the Federal Court of Justice (BGH) confirmed the decision of the Federal Patent Court in the DABUS case that only a natural person can be an inventor within the meaning of Section 37 (1) German Patent Act (PatG). A machine system consisting of hardware or software cannot be designated as an inventor even if it has artificial intelligence (AI) functions. Many other patent offices and courts referred to by the Federal Court of Justice (e.g. the European Patent Office, the UK Supreme Court, the Federal Court of Australia, the United States Court of Appeals for the Federal Circuit and the High Court of New Zealand) had already come to this conclusion.

Designation of human inventor possible, even if AI makes the main contribution

The designation of a natural person as the inventor is also possible if an AI system has been used to find the claimed technical teaching. The designation as inventor would merely indicate which persons were involved in a legally significant manner in the discovery of the claimed teaching and therefore acquired the rights to the invention. This attribution would not presuppose a contribution with independent inventive content. Only those contributions that have not influenced the overall success, i.e. are insignificant in relation to the solution, are to be excluded, as well as those that were created on the instructions of an inventor or a third party. Therefore, a human contribution that has significantly influenced the overall success is sufficient for the status of inventor in the case of a technical teaching that was discovered with the help of an AI system. A system that searches for technical teachings without any human preparation or influence would not exist according to the current state of scientific knowledge. It would therefore be possible and reasonable for the applicant to name an inventor even if, in his view, an artificial intelligence system had made the main contribution.

Reference in the description that AI created the invention is obsolete

The desired addition to the description by stating that the invention had been created by an artificial intelligence called DABUS was not admissible because it called into question the designation of the applicant as inventor and therefore meant that the designation of the inventor did not meet the requirements of Section 37 (1) PatG.

Designation of the inventor may, however, contain the addition that the inventor has caused a specified AI to generate the invention

However, a sufficiently clear designation of the inventor can be supplemented by the statement that the inventor has caused a specified AI system to generate the invention. Such an indication is legally irrelevant and does not justify the rejection of the application. Despite this addition, the designation of the inventor satisfies the requirements of Section 37 (1) PatG, according to which the applicant must in essence name the inventor and declare that no other persons are involved in the invention. The addition in question makes it sufficiently clear that DABUS is not named as a co-inventor, but only as the means used by the applicant to find the claimed technical teaching. The applicant is thus clearly named as the inventor.

Comment

The decision is in line with several other decisions of various patent offices and courts, which had refused to accept an AI system as an inventor and thus does not come as a surprise. The decision that AI can additionally be described as having been caused by the inventor to generate the invention is consistent in that the causative effect was still controlled by a human. However, it remains to be seen whether the decision not to allow an AI system to be recognized as an inventor will change as technical development progresses and if such systems would eventually be able to search for technical teachings without human preparation or influence.

BGH, order of June 11, 2024 - X ZB 5/22, available here