Influence of Artificial Intelligence in Patent Law – BGH, Ref. No. X ZB 5/22
The use of artificial intelligence – AI for short – is a hot topic. This also brings up legal issues. The German Federal Court of Justice (BGH) has now made an important decision regarding patent law. In its ruling of June 11, 2024, the BGH made it clear that AI cannot be an inventor within the meaning of the Patent Act (Ref. No. X ZB 5/22).
Artificial intelligence is increasingly infiltrating various areas of our lives. However, the rise of AI also raises legal questions, including those related to copyright and patent law, according to MTR Legal Rechtsanwälte, a commercial law firm that advises, among other things, in the field of intellectual property law.
The case before the BGH involved an application for a patent for an invention created independently by AI. The invention concerned a container for food and beverages. The AI was to be registered as the inventor of the container.
Patent Office Rejects Registration of AI as Inventor
The German Patent and Trademark Office (DPMA) rejected the application. Its decision was based on the argument that only a natural person can be registered as the inventor. An appeal was filed with the Federal Patent Court against this decision. In the first auxiliary request, the applicant unsuccessfully sought a ruling that no inventor needed to be named. However, the applicant S. succeeded with another auxiliary request. According to this request, the wording should state that S. had prompted the artificial intelligence to generate the invention.
This formulation was accepted by the Federal Patent Court, as it complied with the requirements for the designation of inventors under Section 7(2) of the Patent Ordinance. Therefore, the DPMA was to acknowledge the naming of the inventor as properly and timely submitted. However, the President of the German Patent and Trademark Office appealed this decision.
Only Natural Persons Can Be Inventors
The case ultimately went to the BGH, and the judges in Karlsruhe upheld the decision of the Patent Court. In doing so, the BGH first clarified that, under current law, only natural persons can be named as inventors, not machines. By granting the right of the inventor to have their name mentioned, the legislator has acknowledged their status as an inventor or their honor as such. It follows, therefore, that an artificial intelligence cannot be named as an inventor or co-inventor. Similar decisions have already been made in other countries.
However, the decision of the Patent Court to recognize the auxiliary request, which named the applicant as the inventor, was not objectionable. As required, a natural person is named, and it is noted that the inventor is also the applicant, according to the BGH. The additional reference to the AI does not violate the Patent Ordinance.
Inventor Status Also Includes Legal Relations
The BGH further explained that the status of the inventor does not merely involve discovering a new technical teaching. Rather, it also includes legal relationships. For instance, an inventor can have the right to a patent. In addition, there is also the inventor’s personality right. A natural person can still be named as the inventor even if they have used artificial intelligence.
For determining whether there is a creative contribution that establishes inventor status, the BGH’s consistent case law holds that it is not necessary for this contribution to possess independent inventive content. What is important is that the human contribution significantly influences the overall success. The nature and intensity of the human contribution, however, are not decisive.
Invention Without Humans Not Possible
Even if an artificial intelligence has made a significant contribution to the invention, this does not contradict the assumption that at least one natural person is to be considered the inventor due to their contribution. A system that searches for technical teachings entirely without human influence does not exist according to the current state of scientific knowledge, the BGH emphasized. Therefore, the naming of a natural person as the inventor is always possible.
With its ruling, the BGH has made it clear that in every invention, humans remain essential, even if AI is used. This is also likely to influence further decisions in patent law or copyright law concerning the use of artificial intelligence.
MTR Legal Rechtsanwaelte advises in the field of intellectual property law.
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