The designation of an inventor is a formal requirement that German and European patent applications must fulfill. The question of whether an artificial intelligence machine can be designated as an inventor (for the background and the situation in other jurisdictions, see the “News” article of November 2, 2021) has recently been addressed by both German Federal Patent Court in case 11W(pat) 5/21 and the Legal Board of Appeal of the European Patent Office in cases J 8/20 and J 9/20.
In principle, both the German Federal Patent Court and the Board of Appeal of the European Patent Office have now confirmed the respective first-instance decisions of the German Patent and Trademark Office and the European Patent Office. According to these decisions, only a human inventor can be an inventor within the meaning of the Patent Act or the EPC, so that the designation of a machine as inventor does not satisfy the respective requirements for the designation of an inventor. Nor could a machine transfer rights to the applicant, so that the applicant as owner of the machine was not a successor in title to the machine, to which the right to a patent could have been transferred.
The Federal Patent Court based its decision in particular on the fact that the designation of inventors under § 37(1) Patent Act must be seen in the context of the inventor’s personality right under § 63 Patent Act such that § 37(1) Patent Act, since an artificial intelligence is not entitled to recognition of an inventorship under § 63 Patent Act, leaves no room for the designation of an artificial intelligence as inventor or co-inventor. Nevertheless, the Federal Patent Court had no objections to additionally referring to the activity of an artificial intelligence in the course of naming the inventor: No violation of the formal requirements of § 7(2) Patent Ordinance or of other standards was to be seen in indicating the addition “who caused the artificial intelligence DABUS to generate the invention” under a correctly indicated inventor name of the applicant. The reasons for the decision of the Board of Appeal of the European Patent Office are not yet available.
Thus, before both offices, the possibility to name an artificial intelligence as inventor of a European patent application or to have, as applicant, the right to the invention transferred from an artificial intelligence remains denied. Before the German Patent and Trademark Office, however, at least an activity of an artificial intelligence can be referred to in the course of naming the inventor. However, the appeal on points of law has been admitted, so that the decision of the Federal Patent Court may be reviewed again by the Federal Court of Justice.