These days, patent courts across the world have to address the question of how to deal with AI-generated inventions.
The German Federal Court of Justice ("FCJ") has recently issued a landmark decision (decision of June 11, 2024, file no. X ZB 5/22) on this topic. It ruled that German patent law re-quires that not the AI system but the natural person who significantly influenced the AI sys-tem should be identified as the inventor in the patent application. The decision reinforced the principle that German patent protection is reserved for human beings and at the same time confirms that AI-generated inventions can be registered as a patent. The FCJ also cited comparable case law on the patentability of AI-generated inventions across the world.
Key Facts of the Case
The case concerned a patent application for a food and beverage container created by an AI system called DABUS. The application listed the AI system as the sole inventor. The German Patent and Trade Mark Office ("GPO") rejected the application, stating that only natural persons can be named as inventors. Upon appeal, the German Federal Patent Court granted the patent under the condition that the natural person who prompted the AI system to generate the invention was named in the application instead of the AI system. The FCJ confirmed this decision.
Key Findings of the FCJ
- Patentability of AI-Generated Inventions: The FCJ ruled that inventions generated by AI systems can be patented in Germany, provided they meet the existing criteria for patent protection under German law.
- Human Inventor Requirement: The FCJ emphasized that a human inventor must be named in the patent application. This does not mean that a natural person must have provided independent inventive content. But it is necessary that a human contribution has significantly prepared or influenced the AI system This should currently always be the case as "there is no such thing as a system that searches for technical teachings without any human preparation or influence".
- Choice of Human Inventor: The FCJ left it open, whether the mere position as manufacturer, owner or possessor of an AI system is sufficient for such human contribution or whether a preparation or influence of the AI system always requires programming, data training, checking, or selecting from results proposed by the AI system. In practice, this question will likely not become relevant as the GPP generally only verifies that a human inventor is named in the patent application but not whether the specific person named actually made the invention.
- Possible Adaption of Applications: The FCJ finally clarified that pending patent applications that have named an AI system may still be adapted.
Similar Case-Law Across the World
The decision referenced similar case law in the EU, UK, Australia, U.S., and New Zealand, where courts have also upheld the necessity of naming a human inventor in patent applications for AI-generated inventions.
- The European Patent Office also came to this conclusion on the basis of the similar provisions in Art. 81 and Art. 60(1) EPC (EPO, decision of December 21, 2021 - J 8/20, para. 4.2 et seq.).
- UK courts also decided on the patentability of inventions created with DABUS (Thaler v. Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49; and Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374). The courts rejected the argument that under the doctrine of accession, an AI system obtains the right to the property because it adds value to the property through its labour. For the doctrine of accession to apply the entity adding value through labor has to be a natural person – not a machine. Further, the UK courts held that AI systems have no legal personality and are therefore unable to have patents transferred to the owner of the AI system.
- The FCJ also cited case law of Australia, the U.S. and New Zealand, equally rejecting identifying an AI system as the inventor of a patent (Federal Court of Australia, judgment of April 13, 2022 - [2022] FCAFC 62, GRUR Int 2022, 731, para. 84 et seq.; United States Court of Appeals for the Federal Circuit, judgment of August 5, 2022 - 2021-2347; High Court of New Zealand, judgment of March 17, 2023 - [2023] NZHC 554, para. 33).
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