In a decision published July 31, 2024, the Federal Court of Justice (Bundesgerichtshof, BGH) ruled that because under German patent law only natural persons can be inventors, artificial intelligence (AI) cannot be listed as the inventor in a patent application. The decision was issued on a patent application filed by Dr. Stephen L. Thaler on behalf of the AI system DABUS, which Thaler said created the invention.
Background
Section 37, Paragraph 1 of the German Patent Act (Patentgesetz, PatG) requires that within 15 months of filing an application, the applicant must designate the inventor(s) and affirm that no others participated in the invention. This provision traditionally has been understood to require that a natural person be named as the inventor.
Facts of the Case
In 2019, Thaler applied for a patent for a food container, for which he listed the AI machine DABUS as the sole inventor. While Thaler is the owner, creator, and operator of DABUS, he asserted that DABUS independently created the invention. The German Patent and Trademark Office (Deutsches Patent- und Markenamt, DPMA), rejected the application because it did not name a natural person as the inventor. (BGH decision, paras. 1-19.) Thaler submitted a complaint against this decision, which the DPMA forwarded to the Federal Patent Court (Bundespatentgericht, BPG) for a ruling. Thaler argued that the human inventor requirement reflects an outdated, human-centered view of “creativity” and contended that the definition of “inventor” should be updated to reflect technological progress. He argued the court should interpret the statute in light of these advancements. (BPG, docket no. 11 W (pat) 5/21, para. 1.)
During the course of the appeal, Thaler requested that he be allowed to amend the application to list himself as the inventor who “prompted the artificial intelligence DABUS to generate the invention.”
The court ruled that DABUS cannot be listed as the inventor on a patent application under German law, because an inventor must be a natural person. Furthermore, it stated that there is no legislative gap formed by the development of AI and therefore no need to update the definition of “inventor.” (BPG, Guiding principle, sec. II para. 2 lit. a.) The court ruled that the amended application in which Thaler listed himself as the inventor who employed DABUS to generate the invention was permissible and should be accepted by the DPMA. (BPG, sec. I, paras. 1, 4 lit. a, b, sec. II, para. 2 lit. c.)
The DPMA appealed the decision to the German Federal Court of Justice and Thaler cross-appealed.
Outcome
The German Federal Court of Justice upheld the decision of the Federal Patent Court in all respects. It agreed that only natural persons may be recognized as inventors under the Patent Act. It referred to its previous case law, which established that inventors must be natural persons because an invention involves a creative contribution, not just a collection of technical elements. (BGH, paras. 21, 24, 30, 37, 41.)
Regarding Thaler’s amended application to name himself as the inventor who employed DABUS to generate the invention, the Federal Court of Justice affirmed the Patent Court’s decision to accept this amendment. The Federal Court of Justice stated that the amendment made it clear that “DABUS [was] not indicated as a co-inventor, but only as a means used by the applicant to find the claimed technical teaching.” (Para. 64.) The court found that referencing the additional information regarding DABUS did not violate relevant laws or regulations. (Paras. 66-73.)
The Federal Court of Justice affirmed that while AI can assist in the inventive process, the legal status of inventor remains reserved for humans. The court emphasized that AI contributions must not replace the requirement for a human inventor according to German patent law. (Paras. 21, 24, 26-30, 40-42.) The court noted that it is unnecessary to assess the novelty or inventiveness of individual contributions or features. It stated that what matters is whether the contribution plays a significant role in the overall success of the invention; contributions that do not impact the invention’s success or were made under someone else’s direction are not considered. (Paras. 32-37.)
Related Cases
Thaler has submitted applications to list DABUS as an inventor to several courts and organizations, including those in Australia, the European Patent Office, Israel, New Zealand, South Africa, South Korea, the United Kingdom, and the United States. The Australian Federal Court was the first to accept that an AI could be listed as an inventor on a patent application. However, this decision was later overturned by the Full Court of the Federal Court, which ruled that an AI cannot be recognized as an inventor. With the exception of South Africa, all the other countries listed have rejected the patent applications from Thaler.
Prepared by Ivana Hristova, Law Library Intern, under the supervision of Jenny Gesley, Foreign Law Specialist
Law Library of Congress, September 10, 2024
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