Executive summary:
- AI cannot be named as an inventor, only as a means, in patent application
- Inventor is always a natural person
- Businesses in the AI supply chain should carefully document their (human) contributions to the results of AI (e.g. inventions) to prepare for future litigation
In its ruling of June 11, 2024 (case no. X ZB 5/22), the Federal Court of Justice (BGH) decided on the question of whether an artificial intelligence can be registered as an inventor in a patent application (so-called DABUS decision). As the status of inventor entails a number of rights, this question is highly relevant.
Beyond patent law, the decision is exciting because comparable problems also arise in the area of copyright law.
Finally, in my opinion, the BGH has left important questions unanswered and at the same time pointed to impending disputes that affect the entire AI supply chain.
Note: To make this article more digestible, I will put the legal details in boxes on a separate background color. Feel free to skip these or dive in as you prefer.
No inventor, AI itself, humans and AI or humans using AI as inventors?
In the appeal proceedings that underly the ruling of BGH, the applicant made one main request and three auxiliary requests. The BGH hat to decide which of the requests, if any, were permissible. The main request was to name the DABUS AI itself as the inventor. The first auxiliary request sought a declaration that no designation of inventor was required in this case. The second auxiliary request was aimed at naming the applicant as the inventor, but also state the invention was created by the DABUS AI. The third auxiliary request sought the designation of the applicant as the inventor, but also state that he prompted the DABUS AI to generate the invention.
Legal details (feel free to skip these):
In the appeal proceedings pursuant to Section 77 PatG on which the judgment is based, the applicant had primarily requested that the following designation be allowed as the designation of the inventor (translated into English by me, the author):
DABUS – The invention was created independently by artificial intelligence.
With his first auxiliary request, the applicant sought a declaration that no designation of inventor was required.
His second auxiliary request was aimed at naming him as the inventor and supplementing the first page of the description as follows (translated into English by me, the author):
The present invention was created by an artificial intelligence called DABUS.
With his third auxiliary request, the applicant has sought the designation of his full name as inventor with the following addition (translated into English by me, the author):
who prompted the artificial intelligence DABUS to generate the invention.
It therefore had to be decided whether the AI (named DABUS) could be named as the inventor, whether in this case there was no need to name an inventor, whether it was sufficient to name a human being together with an AI or whether a natural person, i.e. a human being, had to be unequivocally named as the inventor (possibly using the AI as a means).
The patent court only considered the third auxiliary request to be admissible.
Only people, not machines, are inventors
An inventor within the meaning of Section 37 (1) PatG can only be a natural person.
BGH, X ZB 5/22, para. 21 (translated into English by me, the author)
The inventor is the (natural) person from whose creative activity the invention originates (para. 24).
Since the status of inventor not only comprises a legal designation, but also establishes rights (right to the patent, inventor’s personality right), only a natural person and not an artificial intelligence can be entitled to this status (para. 30).
Legal details (feel free to skip these):
The BGH then expressly excludes the question of whether an inventive step is involved in the discovery of technical teachings using AI.
In this context, it can remain undecided whether and under what conditions the use of such systems precludes the assumption that a technical teaching thus found is based on an inventive step.
BGH, X ZB 5/22, para. 33 (translated into English by me, the author)
According to Section 4 sentence 1 PatG (as well as Article 56 sentence 1 EPC), an invention is deemed to involve an inventive step if it is not obvious to a person skilled in the art from the prior art. The considerations made by the inventor are not decisive (!).
Irrespective of this, the designation as inventor does not presuppose that the subject matter of the application is patentable.
BGH, X ZB 5/22, para. 35 (translated into English by me, the author)
Hence, any human contribution that significantly influenced the overall success in finding the technical teaching was sufficient (BGH, X ZB 5/22, para. 38, translated into English by me, the author, emphasis added).
AI cannot therefore be named as an inventor, but there would always be a natural person who could be considered an inventor. Whether this natural person had also carried out an inventive step was irrelevant. The significance and scope of these statements by the BGH are explained below.
The main request was thus dismissed.
An inventor must be designated also when using AI
Unsurprisingly, the BGH concluded that an inventor can and therefore must be named (in accordance with Section 37 (1) PatG) when using AI, meaning that auxiliary request 1 was unfounded.
Human and AI: not clear, therefore inadmissible
Furthermore, the natural person must be clearly and conclusively named as the inventor. The wording of auxiliary request 2, according to which the human being is initially named as the inventor, but it is then claimed that the AI created the invention, does not meet these requirements.
Human by means of AI: permissible
The statement added in auxiliary request 3 (after naming the natural person as inventor) that the inventor caused the artificial intelligence DABUS to generate the invention is admissible, since the AI is not expressed here as a co-inventor, but only as a means used by the inventor.
Significance and scope of the decision
At first glance, the BGH ruling is not very revolutionary. In fact, the direct consequences of the decision are straightforward: when an invention is applied for, a natural person must always be named as the inventor, with an optional reference to the AI used. An AI itself cannot be named as the inventor. According to the BGH, a natural person can always be found who can be considered an inventor. So far so good.
Legal details (feel free to skip these):
The questions expressly or implicitly left open in the decision are much more exciting. The BGH expressly shifts the economically highly significant problems out of the application procedure:
An incorrect assessment has no direct effect on the application procedure. Pursuant to Section 7 (1) PatG, in the interest of a delay-free procedure, the applicant is deemed to be entitled to demand the grant of the patent. Persons who consider themselves to be the authorized inventor instead of the designated person can request the assignment of the right to the grant of the patent outside the application procedure pursuant to Section 8 (1) PatG and consent to the correction of the designation of the inventor pursuant to Section 63 (2) sentence 1 PatG.
BGH, X ZB 5/22, para. 46 (translated into English by me, the author)
This should be seen in the light of the fact that the BGH has previously expressly left undecided the question of whether the use of artificial intelligence in the discovery of a technical teaching constitutes an inventive step (para. 33), and that no conclusive determination is required as to whether the position as manufacturer, owner or possessor of an AI system can justify an attribution to a human contribution that has significantly influenced the overall success (para. 33, f.).
The fact that the BGH left undecided whether the use of AI to discover a technical teaching constitutes an inventive step will likely fuel future disputes and litigation between the parties involved in the AI supply chain, from manufacturer down to the user. When reading the decision, I cannot help but get the impression that the BGH would regularly cast doubt on inventive step if the technical teaching was found by means of AI.
For this reason, the decision (probably due to a lack of reason to do so) has not contributed to increasing legal certainty in the field of artificial intelligence.
Takeaways
When registering inventions, a natural person (i.e. a human being) can and must always be named as the inventor. In addition, reference can be made to the use of AI as a means. However, this should be carefully considered, as it could encourage disputes with other participants in the AI supply chain.
All parties involved in the AI supply chain (manufacturers, users, authors or other rights holders to the data used, etc.) should in particular document any human contributions such as checks, inputs (prompts), readjustments, changes, etc. in detail. It is likely that these will play a crucial role in future legal disputes.
