Germany's highest civil court holds that only a natural person is an inventor, and that steering the machine suffices

2024-06-11Germany

Bundesgerichtshof (Federal Court of Justice), Beschluss of 11 June 2024, X ZB 5/22, DABUS (X. Zivilsenat: Bacher, presiding, Hoffmann, Deichfuß, Kober-Dehm and Marx), dismissing the Patent Office's appeal and the applicant's cross-appeal from Bundespatentgericht, 11 W (pat) 5/21 (11 November 2021)

The German Federal Court of Justice decided Dr. Stephen Thaler's application DE 10 2019 128 120.2, a food or beverage container with a fractal wall profile, which named the artificial intelligence system DABUS as inventor. The German Patent and Trademark Office refused the application; the Federal Patent Court accepted an auxiliary request naming Thaler as the inventor who caused DABUS to generate the invention. The Federal Court of Justice dismissed the Office's appeal and Thaler's cross-appeal. Its headnotes state that an inventor under Section 37(1) of the Patent Act can only be a natural person, that a machine or software system cannot be named even if it has artificial intelligence functions, that a natural person must and may be named even where such a system was used to find the claimed technical teaching, and that an addition stating the inventor caused a named artificial intelligence to generate the invention is legally irrelevant and does not justify refusal. The same statement in the description was refused. The court held that no contribution with independent inventive content is required; a human contribution that substantially influenced the overall result suffices, with programming, data training, starting the search and selecting among outputs given as examples and the required intensity left open. It added that on present knowledge no system finds technical teachings without any human preparation or influence.

What it changesFor a program filing in Germany the designation question is settled at both ends: name the human, never the system, and if the client wants the record to say a model generated the output, put it as an addition to the inventor designation in the form the court approved rather than in the description, where the same statement is refused. The more useful part is the standard for who the human is. A person who programmed or trained the system, started the run or selected among its outputs is the kind of contributor the court described, and no independent inventive contribution is required. That is a lower bar than the February 2024 United States inventorship guidance, which asks for a significant contribution to conception, so an invention record built to the United States standard satisfies the German one. The inventorship questionnaire for every artificial-intelligence-assisted disclosure should capture those four acts by name and person for each claim, because the court left the required degree of influence open.

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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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