Facts
On 17 October 2019 the applicant filed a German patent application for a fractal-profile food or beverage container, naming "DABUS" as inventor and stating that an artificial intelligence had generated the invention autonomously. The German Patent and Trade Mark Office (DPMA) refused the application because only a natural person can be named as inventor. Before the Federal Patent Court he asked for DABUS to be accepted or, alternatively, for a declaration that no inventor was needed, for himself to be named with a note in the description that DABUS created the invention, or for himself to be named as the person who caused DABUS to generate it. The court accepted only the last request, and both sides appealed.
What was the legal question in DABUS (X ZB 5/22)?
The court had to decide whether an inventor under section 37(1) of the Patent Act can only be a natural person, so that a system with artificial intelligence functions cannot be named, and whether the duty to name an inventor falls away where such a system made the essential contribution. It also had to decide whether statements about the AI's role added to the naming of a natural person make the designation unclear, and whether the application could be refused on that ground under section 42(3) of the Act.
What did the Federal Court of Justice of Germany (Bundesgerichtshof, BGH), Tenth Civil Senate decide?
The BGH dismissed both appeals. An inventor under the Patent Act can only be the natural person whose creative activity produced the invention; a machine system of hardware or software cannot be named even if it has AI functions. Naming a natural person remains possible and required where AI was used: a human contribution that substantially influenced the overall result is enough, and on current knowledge no system works without any human preparation or influence. Adding to the description that DABUS created the invention was inadmissible because it cast doubt on the designation. Naming the applicant as the person who caused DABUS to generate the invention was valid; that addition is legally irrelevant and presents DABUS merely as a tool.
Why does DABUS (X ZB 5/22) matter?
The BGH aligned itself with the European Patent Office and with courts in the UK, the US, Australia and New Zealand on AI inventorship. For AI-assisted inventions, it treated a human contribution that substantially influenced the overall result as enough. It left open which kind of contribution suffices, whether owning the system, programming, data training, starting the search or choosing among outputs, and said that the Patent Office does not check the accuracy of the designation, which persons claiming to be the true inventors may contest later.
Related stages
Below: Federal Patent Court, 11 November 2021, 11 W (pat) 5/21. The decision is marked for publication in BGHZ. For DABUS applications elsewhere, see thaler-dabus-uk-supreme-court and dabus-japan-ip-high-court; on copyright, see thaler-v-perlmutter.