German court considers AI generated inventions

Out-Law News | 30 Nov 2021 | 2:38 pm | 2 min. read

Artificial intelligence (AI) generated inventions are not precluded from patent protection – provided a human is named as inventor in the patent application, Germany’s Federal Patent Court has ruled.

According to publisher JUVE Patent, the Federal Patent Court in Germany ruled that the named inventor in a patent application must be a natural person, but that the AI system supposedly responsible for the underlying invention can be additionally named.

The ruling is the latest in a string of decisions made by patent authorities and the courts around the world that concern ‘DABUS’, an AI system that US scientist and technologist Dr. Stephen Thaler has claimed is responsible for autonomous inventions.

In September, the Court of Appeal in England and Wales found that only a person can be an inventor, and that as Dr. Thaler accepts that he is not the inventor, he has no entitlement to the patent. The court reached that decision, albeit in a split decision, after considering that AI systems cannot own or transfer patent rights under UK law currently. The UK’s Intellectual Property Office is, however, considering potential legislative reforms to account for AI-devised inventions – though experts have queried whether AI is sophisticated enough, in its current state, to require reforms to be made to UK intellectual property law.

Earlier this year Dr Thaler also lost a bid to register DABUS as an inventor in a European patent application filed before the European Patent Office (EPO). He has, however, lodged an appeal against that decision which is due to be heard next month.

While a district court in the US state of Virginia has also ruled against Dr. Thaler this year, a parallel case about applications for the same inventions was decided in Dr Thaler’s favour in Australia. That decision is the subject of an appeal by Australia’s commissioner of patents, however. Further, earlier this year the South African Patent Office granted Dr Thaler’s patent.

Marc Holtorf, patent litigation expert at Pinsent Masons, said “The recent Thaler/DABUS decision of the German Federal Patent Court has cleared the way to register inventions made by AI as patents in Germany. While the court decided that the listed inventor must be a natural individual it has also ruled that the AI can be named additionally.”

However, Sarah Taylor, also of Pinsent Masons, said the “rare win” for Dr Thaler is likely to be appealed. “Despite this, it appears that the German court has attempted to find a pragmatic solution to this problem, of dealing with patent applications that concern AI devised inventions,” Taylor said.

“While not identical, this is similar to one of the solutions to the problem of AI inventorship proposed by the UK Intellectual Property Office in its recent AI and IP: copyright and patents consultation.,” she said.

The solution, one of four proposed by the IPO, would provide a right to obtain and own patent rights for an invention devised by AI. The human closely responsible for an invention devised by AI would own the patent rights in the first instance. So, if no human qualifies as inventor, then the patent owner is the human who made the arrangements necessary for AI to devise the invention. It would not confer AI systems with the right or ability to apply for or own patent rights.

“Consistent global reform would be desirable to avoid diverging decisions, and we look forward to the European Patent Office appeal later this year,” said Taylor.