German Federal Patent Court Recognizes Human Inventor Prompting AI in Landmark DABUS Case

Germany’s Federal Patent Court has issued a significant ruling in the ongoing global debate over artificial intelligence (AI) as an inventor in patent applications. The court set aside a decision by the German Patent and Trademark Office (DPMA) that had refused a patent application on the grounds that an AI, DABUS, was named as the inventor.

The patent application, filed on October 17, 2019, and titled "Food Container," listed Stephen L. Thaler as the applicant and identified the inventor as "DABUS – The invention was autonomously generated by an artificial intelligence." Following oral arguments in November 2021, the court delivered its fully reasoned opinion on March 31, 2022, which was published on April 19, 2022.

The court ruled that the DPMA’s refusal was to be set aside and allowed a revised inventor designation. This revised designation states: "Stephen L. Thaler, PhD who prompted the artificial intelligence DABUS to create the invention." This formulation was among several options submitted by the applicant during proceedings.

Importantly, the court found that including information about DABUS in the inventor designation did not contravene the Patent Regulations. It emphasized that the DPMA retains discretion over what inventor data is published. An unofficial English translation of the decision noted that, in the absence of explicit prohibitions against including additional information, an inventor should not be prevented from adding such details to the official inventor form (P 2792). The court also referenced the personal rights of inventors in this context.

However, the court clarified that it is not permissible to designate DABUS itself as the inventor, nor to omit an inventor designation altogether. Additionally, the court rejected the option of listing "c/o Stephen L. Thaler, PhD" as the inventor and amending the patent description to state the invention was created by AI.

This ruling marks the latest judicial decision on the DABUS patent applications, which have been filed internationally under The Artificial Inventor Project. Prior rulings, including a recent decision by Australia’s Federal Court, have consistently held that AI cannot be recognized as an inventor under current patent laws.

Stephen L. Thaler, the applicant, maintains that DABUS is the true inventor and argues that failing to acknowledge this would be dishonest. The German court’s approach offers a compromise by recognizing the human who prompted the AI while also acknowledging the AI’s creative contribution.

If upheld, this decision could provide a practical resolution to the complex question of AI inventorship. It aligns with the 2020 resolution by the International Association for the Protection of Intellectual Property (AIPPI) on AI-generated inventions, which supports recognizing human involvement alongside AI contributions.

The case reference is 11W (pat) 5/21. Thaler was represented by Köllner & Partner mbB, Patentanwälte, based in Frankfurt.

The decision has sparked commentary regarding its implications and interpretation. Some observers caution that the ruling may amount to a procedural accommodation rather than a substantive recognition of AI as inventor, and note that such an approach might not withstand scrutiny in jurisdictions like the United States. Others highlight potential nuances lost in translation from German to English, particularly concerning the inventor designation and the role of the human applicant as a "designated" inventor for prompting the AI.

This ruling contributes to the evolving legal landscape surrounding AI and intellectual property, underscoring the challenges of adapting patent frameworks to emerging technologies.