Only human beings can be inventors: German Federal Patent Court agrees with international trend
In a recent blog post, we discussed the growing trend of AI-related patent applications. This trend leads to many interesting legal questions around inventorship and ownership, in particular as AI technology develops to become increasingly autonomous.
The Artificial Inventor Project and Dr. Stephen Thaler have filed patent applications with several patent offices worldwide for two inventions autonomously generated by DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), an AI system created by Dr. Thaler. The DABUS system is named as sole inventor.
As far as we are aware, the South African Companies and Intellectual Property Commission (CIPC) is so far the only patent office to have granted a patent for DABUS named as sole inventor. However, South Africa has a depository system, where the CIPC checks only basic formal requirements.
Other jurisdictions having substantive examination, such as the European Patent Office (EPO), the UK, the US, Australia and Germany, have rejected the applications because DABUS is not a natural person.
The EPO rejected the applications on the basis that the name of a machine does not meet the requirements of the EPC with respect to designating the inventor. Although the decisions of the appeal (J 8/20, J 9/20) are not yet published, the preliminary view of the EPO Legal Board of Appeal affirms the decision of the first instance: under the EPC, the inventor has to be a person with legal capacity. The Board of Appeal is the final instance at the EPO and therefore no further appeal is possible.
In the UK, the Court of Appeal affirmed that, under the Patents Act 1977, the right to apply for an invention must originate from a human inventor (Stephen Thaler v Comptroller General of Patents Trade Marks and Designs  EWCA Civ 1374). The court accepted that DABUS had created the invention, but this did not mean that the machine was the inventor within the meaning of the act. Further, ownership of a machine was not sufficient for entitlement to an invention. Thaler could apply for permission to appeal this decision to the UK Supreme Court.
The US District Court for the Eastern District of Virginia (Case No. 1:20-cv-00903 United States District Court, Eastern District of Virginia) decided that the USPTO’s interpretation of the Patent Act that an inventor must be a natural person was correct. This decision is being appealed to the Court of Appeals for the Federal Circuit.
In Australia, the patent application was initially rejected by the Australian Patent Office, but this decision was overturned by an Australian Federal Court. In Thaler v Commissioner of Patents  FCA 879, Justice Beach determined that the name of the inventor can be a non-human. However, that decision has now been overturned by the Full Court of the Federal Court (Commissioner of Patents v Thaler  FCAFC 62), which has affirmed that a patent applicant, owner and inventor must be a natural person.
Now, in decision (11 W (pat) 5/21, “Food Container”) that was published on April 21, 2022, the German Federal Patent Court has decided that it is not allowed to designate an AI as the inventor for a national German patent application.
The court decided on an appeal against a decision of the German Patent and Trademark Office (GPTO). The GPTO considered the originally filed designation of inventor, which designated the AI system DABUS, as invalid and refused the patent application.
The court first decided if the appeal was admissible at all. There were doubts if the applicant actually had a legal interest in filing the appeal, or if the appeal must be considered as having been filed only out of curiosity for clarifying an interesting question of law. In this case, the appeal would have been inadmissible.
The court stated that, according to German patent law, for the assessment of patentability it was not relevant how the invention was made. Also, if he considers an AI as the inventor was not a fact that the applicant must state truthfully, but only a question of law on which there can be different opinions. Accordingly, in the opinion of the court, the applicant had no real reason to not designate himself as the inventor.
However, the court decided that designating an AI as the inventor had been seriously discussed in the literature, and was decided to be allowable in Australia, so it would have been inappropriate to deny the applicant the possibility of legal prosecution. Therefore, the court admitted the appeal and decided on its merits.
The court decided that an AI may not be designated as the inventor. According to German patent practice, the inventor has the right to be designated as an acknowledgement for the achievement of having made the invention. Thus, the right of the inventor to be designated was based on the so-called inventor’s honor which was considered to not exist for an AI.
The court also did not allow omitting the designation of inventor which is required by German patent law. It decided that, in the case of doubt, the applicant should designate himself as the inventor.
Finally, the court allowed a designation of inventor where the applicant had designated himself, with an addition that he has caused the AI system DABUS to generate the invention. However, the court indicated that the GPTO is not required to consider the addition in publications, for example in the register and in the publication of a granted patent.
The decision of the court is subject to a legal appeal to the Federal Court of Justice, which is the highest instance court on patent matters in Germany, so it may possibly be reversed.
In summary, the Federal Patent Court has decided that only natural persons can be designated as the inventor. For inventions made by an AI, it is therefore recommendable to designate a natural person as the inventor. Since, according to German patent law, the only consequence of a wrong designation of inventor is that the true inventor can request a correction, this is unlikely to have any negative effect.
The decision of the Federal Patent Court confirms the International trend that the designated inventor of a patent application must be a natural person and AI systems cannot be designated as inventors.
Communication with the EPO via email
23. November 2022
Prior publication of a Community Design within the 12-month grace period by the bulletin of an Office is an act of harmless disclosure under Art. 7(2) CDR
31. August 2022
A Picture can speak thousand words – can that picture also protect thousand - if not more - (unregistered) designs?
04. August 2022