“If upheld, the German decision may resolve [the AI as inventor] quandary, as it enables a human to be named as the deemed inventor while also recognizing the creative contribution of the AI.”
Germany’s Federal Patent Court has set aside a decision of the country’s Patent and Trademark Office (DPMA) that refused a patent application naming an artificial intelligence (AI) as the inventor. The decision was first rendered in November 2021 following oral argument, but the fully written opinion was only delivered March 31, and was published in German on the court’s homepage on April 19, 2022.
The application was filed on October 17, 2019, and is titled “Food Container”. It named the applicant as Stephen L. Thaler and the inventor as “DABUS – The invention was autonomously generated by an artificial intelligence.”
Alternative Inventor Designation
Following a hearing in November 2021, the court said that a revised designation of the inventor stating “Stephen L. Thaler, PhD who prompted the artificial intelligence DABUS to create the invention” was allowable. The revised designation was one of several options that the applicant submitted to the court.
The court said that the addition of the information about DABUS in the inventor designation was not contrary to the Patent Regulations. Moreover, the DPMA has discretion with regard to the data about the inventor that is published.
According to an unofficial translation of the decision seen by IPWatchdog, the court said: “in the absence of an explicit prohibition of unnecessary information in the Patent Regulations, an inventor (who may also be supported in this respect by his personal right as an inventor) should not necessarily be prevented from including additions of the kind at issue here in the official form P 2792.”
However, the court said it was not allowable to designate DABUS as the inventor; not to designate an inventor at all; nor to add “c/o Stephen L. Thaler, PhD” to the inventor designation and amend the description to say that the invention was created by an AI called DABUS.
The decision can be appealed on points of law to the Federal Court of Justice.
Artificial Inventor Project
The German Court is the latest to rule on the DABUS applications, which have been filed worldwide as part of The Artificial Inventor Project. Previous decisions, including recently that of Australia’s Federal Court, have concluded that an AI cannot be an inventor.
But the patent applicant, Thaler, argues that DABUS is the true inventor of the inventions and that to state otherwise would be dishonest.
If upheld, the German decision may resolve this quandary, as it enables a human to be named as the deemed inventor while also recognizing the creative contribution of the AI.
This solution would appear to be in line with the AIPPI resolution on AI-generated inventions, which was agreed in 2020.
The reference for the case is 11W (pat) 5/21. Thaler was represented by Köllner & Partner mbB, Patentanwälte in Frankfurt.
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