Germany's Federal Patent Court accepts an inventor designation that names the person and records the machine's role

2021-11-11Germany

Bundespatentgericht (Federal Patent Court), 11th Senate, decision of 11 November 2021, 11 W (pat) 5/21, on German patent application No. 10 2019 128 120.2 filed 17 October 2019, setting aside the refusal by the Deutsches Patent- und Markenamt

Stephen Thaler's German application for a food or beverage container, filed 17 October 2019, designated as inventor "DABUS" with the statement that the invention was autonomously generated by an artificial intelligence. The German Patent and Trade Mark Office refused the application for want of a proper designation of inventor. On appeal, Thaler maintained the designation of the machine as his main request and offered alternatives: a designation naming no inventor, a designation of the machine care of Stephen L. Thaler with a description stating that the invention was created by an artificial intelligence, and a designation naming Stephen L. Thaler, PhD, as inventor with the addition that he prompted the artificial intelligence DABUS to generate the invention. The 11th Senate of the Federal Patent Court announced its decision after the oral hearing on 11 November 2021. It rejected the designation of the machine, the designation of no inventor and the care-of formulation, and allowed the third auxiliary request, holding that a designation reading, in the German wording, Stephen L. Thaler, PhD, der die künstliche Intelligenz DABUS dazu veranlasst hat, die Erfindung zu generieren, is admissible, so that the application proceeds with a natural person named as inventor and the machine's contribution recorded in the designation. The court's written reasons are to follow, and the decision is subject to an appeal on points of law to the Federal Court of Justice.

What it changesGermany has produced a designation form that no other jurisdiction has accepted: a natural person named as inventor, with a truthful note that the person caused a machine to generate the invention. For families with a German member, that resolves a practical worry of engineers who do not want to swear to having conceived something a model produced. The person who set the machine to the task and selected the result can be named, and the designation can say so. The same form is not safe elsewhere. The European Patent Office and the United Kingdom require a person and give no sanction to annotations, and a United States declaration must state that the individual believes himself or herself to be an original inventor. The portfolio rule that follows is to keep one human designation across the family, document the human's conception contribution in a contemporaneous record, and treat the German annotation as optional surplus rather than as a substitute for that record.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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