Germany’s latest Dabus decision aligns with European approach

The 18th Senate at the German Federal Patent Court has recently confirmed that the German Patent and Trademark Office (DPMA) cannot grant a patent on AI-generated inventions, unless the applicant falsifies statements regarding the inventor (case ID: 18 W (pat) 28/20). The decision, which covers DE 10 2019 129 136 A1 for a neural flame and concerns AI system Dabus, which stands for ‘Device for autonomous bootstrapping of unified sentience’, is the latest to reject the notion that a patent application can name an AI system as an inventor.

Now Germany looks to be aligning its current case law with that of the UK and the European Patent Office, as well as patent courts further afield, such as Australia and New Zealand. An exception is South Africa, whose IP office has granted Thaler’s patent.

Court contrasts previous approach

But the decision of the 18th Senate is at odds with the result of a 2021 hearing, which concerned one of Dabus creator Stephen Thaler’s patents, DE 10 2019 128 1 202, for a fractal container. At this time, the 11th Senate under presiding judge Siegfried Höchst decided that the listed inventor must be a natural person, even if the AI has identified both the problem and the solution. However, at the same time, the court noted that the application can name the AI system as an addition to the human inventor, even if the application does not suggest the AI system is actually capable of creating the invention.

Markus Rieck

Now the 18th Senate has suggested that a way for an application to list an AI system as an inventor could be to falsify the information, for example by listing a false inventor. However, the parties representing Stephen Thaler and Dabus rejected this notion, since including false information on a patent application could set a dangerous precedent.

While a DPMA appeal against the 11th Senate’s decision is currently pending before the German Federal Court of Justice, JUVE Patent is not aware if Dabus’ representatives have appealed the result of the second application.

Dabus unlucky in Europe

Elsewhere, Stephen Thaler has not had much luck in the UK: the Dabus creator is already three rounds down. The latest blow came in September 2021, when the Court of Appeal upheld that an inventor can only be a ‘natural person’, and not a machine. Thaler’s argument is that Dabus itself should be named as the inventor and owner of EP 3 564 144 and EP 3 563 896, since it was the AI device which developed or ‘created’ the inventions behind the patents. The final step was a successful appeal to the Supreme Court, the outcome of which the court should publish before the end of this year.

The EPO has also refused to grant EP 18 275 163, for a fractal beverage container, on the grounds that the listed inventor must be human and cannot be an AI machine. In a decision confirmed by the EPO Boards of Appeal (case ID: J08/20), the examiners decided that listing AI as an inventor contravenes Article 81 of the European Patent Convention, where the inventor must be a person in a legal capacity. The other patent at issue is EP 182 75 174, which covers technology to create a fractal light signal.

However, there is growing appetite for patent case law in Europe to adapt for growing numbers of AI-related applications. Dabus is likely to have kicked off the first of a multitude of discussions around inventor rights.

Teamwork for AI

In Germany, Stephen Thaler relies on a team consisting of patent attorneys Markus Rieck of Fuchs IP and Malte Köllner, who works in his own firm Köllner & Partner. The firms have a close working relationship in the Dabus case, with Markus Rieck taking the lead in the case over DE 10 2019 128 1 202. In the previous case, concerning the application for a fractal container, Malte Köllner led the team.

Malte Köllner

DPMA president Eva Schewior was present on the opposing side, alongside four representatives from the DPMA. In the previous hearing, former president Cornelia Rudloff-Schäffer appeared as an opponent. She stepped down from this role in January 2023.

For Dabus
Fuchs IP (Frankfurt): Markus Rieck (partner, patent attorney)
Köllner & Partner (Frankfurt): Malte Köllner (partner, patent attorney)

German Federal Patent Court, 18th Senate
Marina Wickborn (presiding judge), Mr. Kruppa, Uwe Schwengelbeck, Blanka Zimmerer