German Federal Supreme Court confirms that AI system cannot be named as inventor

The scientist sought protection for these inventions in several jurisdiction, naming DABUS as the inventor. This triggered a debate about the patentability of AI-conceived inventions and ownership of such inventions.

At the same time, a series of decisions issued by inter alia the European Patent Office, US Supreme Court and UK Supreme Court confirmed that any application referring to AI as the inventor is doomed to fail.

An order of the German Federal Supreme Court (“BGH”) of 11 June 2024 (case number X ZB 5/22, “Food Container”) arguably puts an end to the saga. With remarkable clarity, the short order summarises why AI cannot be named as the inventor.

What should I do?

According to the BGH, an application that only refers to an AI system as the inventor is inadmissible. Regardless of whether the AI system allegedly conceived of the invention, or whether it was used as a tool, section 37 of the Patent Act requires that a living person be named as the inventor.

Furthermore, the patent applicant must avoid contradictory statements about the designated inventor in the application form on the one hand, and the inventor in the description on the other hand. In the “Food Container” case, the applicant had eventually named himself as the inventor. At the same time, he applied for changes to the description according to which the invention had been conceived by DABUS. This rendered the inventor designation invalid.

On a final note, the court addressed the question whether it was possible to include a reference to the AI system in the inventor designation. The wording proposed by the applicant referred to himself, plus an AI system (DABUS) he caused to generate the invention. The German patent and trademark office had argued that this combination rendered the inventor designation invalid. The BGH dismissed this with a dry comment. If, in addition to the living person, the application form includes a reference to an AI system as a tool, that reference is irrelevant. It does not in itself justify a dismissal of the application.

The take-away from the German order, and indeed all prior decisions, is this: the law as it stands does not cater for invention allegedly conceived by AI systems. None of the decisions touch on material issues, such as the question whether an AI system is capable of inventing. AI systems simply cannot be named as inventors. For the time being, those who rely on artificial intelligence must refer to a living person as the inventor if they seek patent protection.

What else do I need to know about AI and IP protection?

There is a parallel discussion about the question as to whether works products allegedly created by AI are copyrightable. According to the prevailing view, owing to the lack of human creativity, such work products do not enjoy protection under copyright law either.

Further reading on AI and IP protection:

• Webinar: Unlocking generative AI and copyright law
• Innovation agenda: the latest trends in global patents and trade secrets law
• Patenting AI innovations in the UK
• All AI-Board: Eversheds Sutherland’s legal guide to navigating artificial intelligence – intellectual property