AI Inventorship: The Latest Developments

A recent hot topic in IP law internationally has been whether an AI can be recognised as an inventor under existing patent law. So far, courts around the world, including the UK Supreme Court, the Australian High Court, the US Court of Appeals for the Federal Circuit and the High Court of New Zealand as well as the EPO, have consistently ruled that on the basis of the current legislation, this is not possible.

The German Federal Court of Justice (Bundesgerichtshof, BGH) recently issued its judgment on the same issue. Unsurprisingly, its view is no different: An inventor in the sense of the German Patents Act (Sec. 37 (1) Patentgesetz) can only be a natural person. In particular, the BGH states that the Patents Act would only grant inventor status and associated rights (such as the right of personality) to natural persons. The court also found:

• that a human must be named as the inventor even in cases where AI was used in the discovery of the invention.
•  that naming a natural person as inventor in the official application form is not acceptable if at the same time it is also requested to specify in the description that the invention was generated or created by an AI.
• that supplementing the designation of the inventor to explain that the inventor instructed an AI in the generation of the invention is legally irrelevant and therefore does not warrant the rejection of the patent application.

The decision concerns the AI-system DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) created by Stephen Thaler. DABUS had generated a specific food or beverage container, for which patent protection was sought. In the application DABUS had been named as the inventor, resulting in its rejection by the German Patent and Trademark Office (DPMA). Stephen Thaler lodged an appeal (Beschwerde) before the Federal Patent Court (BPatG) including several auxiliary requests, eventually culminating in the present decision of the BGH.

For now, the question of whether an AI can be an inventor appears for practical purposes to be settled and the ball is now in the legislators’ hands to consider whether national law should or should not be amended to allow for a different outcome. When this was last considered in the UK in 2021, the consultation received mixed responses from stakeholders, and the then-government response in 2022 was to make no changes to UK law at that time. Instead, the then-government expressed its intention to advance international discussion so that inventions devised by AI are appropriately protected in the future.

Feel free to reach out in case you are interested in an English translation of the BGH-decision.