Malte Köllner: “You can file a patent application on an AI-assisted invention”

The AI system Dabus stands for ‘device for the autonomous bootstrapping of unified sentience’. The US AI researcher behind Dabus, Stephen Thaler, has been trying for years to have Dabus recognised as an inventor worldwide, including in the German patent DE 10 2019 128 120.2. The patent protects food or beverage containers with a fractal profile.

As in other countries, Thaler’s request has now also failed at the Federal Court of Justice. The highest German patent court ruled in mid-June that an AI system cannot be named as the inventor of a new technology on a patent application (case ID: X ZB 5/22). Nevertheless, the judges rejected an appeal from the German Patent and Trademark Office and confirmed a German Federal Patent Court ruling from 2021.

In the proceedings at the Federal Patent Court, Thaler had filed several auxiliary requests in an attempt to register Dabus in the patent application. In 2021 the Federal Patent Court finally instructed the German Patent Office to grant DE 120.2, naming Thaler as the inventor with the addition “… who prompted the artificial intelligence Dabus to generate the invention”. The German Patent Office officially appealed the ruling. Both parties had a great interest in having the Federal Court of Justice deliver its opinion on important questions in the case. However, the Federal Court of Justice has now upheld this ruling, thus opening a back door for the registration of AI-based inventions.

In an interview with JUVE Patent, Malte Köllner explains how the decision came about and what it means for future AI-based invention applications.

JUVE Patent: The Dabus case has attracted a great deal of attention worldwide. What is special about the case?
Malte Köllner: It raises a very timely question: What happens if inventions are not generated by human inventors any more but by artificial intelligence? What does that do to patent law? Can patent law cope with this new situation? Can we get a patent for an invention generated by AI?

What has the German Federal Court of Justice now decided?
The Federal Court of Justice decided on a number of key issues in this regard. The most important is that you can get a patent for an AI-generated invention. AI-generated inventions are patent eligible.

“The person who prompted the AI system can be named as inventor”

Are there conditions?
Yes. You have to name a human inventor. According to the Federal Court of Justice, even for an AI-generated invention, there is always a human that had a significant influence on the generation of the invention. What kind of influence is of no importance. The human contribution need not be a creative contribution to the invention itself. A significant contribution to the generation of the invention is enough to qualify as inventor. This human being must be identified and designated as inventor. In other words: If you prompt an AI system with a suitable problem and the AI system solves the problem by making an invention, the person who prompted the AI system can be named as inventor. A patent application for this invention can be filed with the patent office.

What does the decision in favour of AI-based inventions mean?
That you can get a patent for an AI-generated or AI-assisted invention.

What have other European courts decided concerning Dabus?
In the past, the courts around the world when confronted with the Dabus case mainly stated that only natural persons can be named as inventor. Questions of patent eligibility of AI-generated or AI-assisted inventions were not answered in these decisions. The reason for this is that the only request in most of these cases was the naming of Dabus as inventor – which was refused.

“There is always a human influence, what kind is of no importance”

The exception from this rule was the decision under appeal by the German Federal Patent Court, which clearly stated that you can get a patent on an AI-generated invention. The reason why this decision went much further than all others resides in the fact that auxiliary requests were filed naming Stephen L. Thaler as inventor with additional remarks on Dabus as generator of the invention.

What is the view of the US Patent Office and US courts?
The US very recently have accepted patent eligibility of AI-assisted inventions. However, they insist on a creative contribution of a natural person to the invention. This is likely due to the US definition of what inventing means: it means conception and reduction to practice of the invention.

Will the Federal Court of Justice’s decision have an impact on the Dabus case in other European countries?
I would say this is likely. But it all depends on the requests that are filed with the courts. If only Dabus is named as inventor, the outcome will likely not change. If Stephen L. Thaler is named as inventor, I would expect that other European courts would come to similar results as the Federal Court of Justice.

And are there any implications for the registration of inventions involving not only humans but also other technical aids besides AI?
Whether an invention is made by AI, whether the AI is a neural network, a vector machine or an algorithm, is of no importance from the perspective of patent law. An invention can also be generated by a machine that tries thousands of antibody variations. The only point of relevance from the perspective of patent law is whether the invention was generated by a human being or a machine. Or a collaboration of the two, i.e. the human using the machine or AI as tool.

“For purely AI-generated inventions, only Germany has opened the door to patent protection in Europe”

What should companies bear in mind when filing patent applications?
You can file a patent application for an AI-assisted invention. This is an invention where humans interact with AI, e.g. use AI as a tool. If you clearly document the human contribution, patent grant should be possible around the world – as long as you name the human as inventor. For purely AI-generated inventions, where humans only prompted the machine, as things stand today, Germany is the only European country to have opened the door to patent protection.

However, other countries are likely to follow, if presented with suitable applications and requests. The current exception would be the US. But who knows, maybe they will find their way one day. Patents for AI-generated inventions are a logical consequence of Article 7 of the TRIPS agreement and thus of modern patent systems.