Martin Ahr Josephine Caneilles June 27 2022 Only human beings can be inventors: German Federal Patent Court agrees with international trend Grünecker | Intellectual Property - Germany Martin Ahr, Josephine Caneilles Intellectual Property IntroductionDecisionCommentIntroductionPatent applications relating to artificial intelligence (AI) are increasingly being filed across Europe (for further details, see "Artificial Intelligence Related Patents at the European Patent Office"). This trend has led to many interesting legal questions around inventorship and ownership – particularly as AI technology becomes 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 the device for the autonomous bootstrapping of unified sentience (Dabus), an AI system created by Thaler. The Dabus system is named as the sole inventor in each case.So far, the South African Companies and Intellectual Property Commission is the only patent office to have granted a patent wherein Dabus is named as the sole inventor. Other jurisdictions, such as the European Patent Office (EPO), the United Kingdom, the United States and Australia, have rejected the applications because Dabus is not a natural person.In a decision published on 21 April 2022,(1) the German Federal Patent Court decided that an AI system may not be designated as the inventor for a national German patent application.DecisionThe decision was made 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, to be invalid, and refused the patent application.The Court first examined whether the appeal was admissible. There were doubts as to whether the applicant had a legal interest in filing the appeal, or whether the appeal had to 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 an assessment of patentability it is irrelevant how the invention was made. Also, the Court considered that the AI system being the inventor was not a fact that the applicant had to state truthfully, but only a question of law on which there could be different opinions. Accordingly, in the opinion of the Court, the applicant had no real reason not to designate himself as the inventor.However, the Court decided that designating an AI system 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 proceeded to decide the case on its merits.The Court decided that an AI system 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 is based on the so-called "inventor's honour" which the Court considered did not exist for an AI system.The Court also did not allow the designation of inventor, which is required by German patent law, to be omitted. It decided that, in case of doubt, the applicant should have designated himself as the inventor.Finally, the Court allowed a designation of inventor wherein the applicant designated himself, with an additional comment that he had created the AI system Dabus to generate the invention. However, the Court indicated that the GPTO was not required to include the additional comments 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 be reversed.CommentThe Federal Patent Court has decided that only natural persons can be designated as the inventor. For inventions made by an AI system, 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 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.For further information on this topic please contact Martin Ahr or Josephine Caneilles at Grünecker by telephone (+49 89 21 23 50) or email ([email protected] or [email protected]). The Grünecker website can be accessed at grunecker.de.Endnotes(1) 11 W (pat) 5/21, "Food Container".