Only a natural person can be an inventor within the meaning of Section 37 (1) Patent Act. For lack of a legal loophole, there is no room for judicial further development of the law with the aim of also being able to designate an artificial intelligence (AI) as an inventor. The provision of Sec. 37 (1) Patent Act is intended to recognize the "honor of the inventor", which an AI does not have.

The applicant of the patent application filed with the German Patent and Trademark Office (DPMA) on October 17, 2019, which has been assigned the file number 10 2019 128 120.2 and whose subject matter, according to the duly subsequently filed German translation, is designated as " LEBENSMITTELBEHÄLTER", did not indicate the name of the applicant or that of any other natural person in the space provided for this purpose on the official form of designation of inventor.

Instead, the applicant indicated the following: "The invention was independently generated by an artificial intelligence."

Accordingly, the applicant submitted that it would not correspond to the actual circumstances if he referred to himself as the inventor. The artificial intelligence (AI) developed by him had produced the invention by acting independently. He, the applicant, was the owner of this AI, but he had had no influence on the task and its solution, which had led to the present invention.

By decision of March 24, 2020, the Examining Division 57 of the DPMA rejected the patent application on the grounds that the filed designation of the inventor did not comply with the statutory provisions.

This was the subject of an appeal by the applicant, who requested, among other things, a declaration that no designation of inventor is required in the present case, since no natural person fulfils the requirements for the grant of inventorship. The right to the patent had passed to the applicant by acquisition of rights, since he is the owner of the artificial intelligence.

The appeal is partially successful on the merits. It leads to the annulment of the contested decision and to the remittal of the case to the DPMA.

The 11th Senate of the Federal Patent Court (BPatG) states in this respect that the applicant overlooks the fact that under German law it is irrelevant for the assessment of whether an invention exists and is based on an inventive step within the meaning of Sec. 4 Patent Law, on which actual development the invention is based and whether named persons are to be regarded as inventors in a correct manner; an invention is judged according to objective criteria, so that it is irrelevant whether it is based on conscious thought, systematic work with planned experiments or merely on the exploitation of coincidentally discovered relationships governed by the laws of nature or - as here - on the use of AI. In none of the cases mentioned is there any recognizable need to dispense with the designation of a natural person as inventor in order to obtain the desired patent.

It follows from this that the "dilemma" described by the applicant, on the one hand having to name the AI as the inventor in accordance with the duty and truth under Sec. 124 Patent Act, and on the other hand thereby suffering the rejection of the application, does not exist at all. The duty of truth under Sec. 124 Patent Act refers exclusively to factual circumstances, whereas the applicant's conviction that not he himself but his AI developed by him is the inventor is merely a legal opinion.

Nevertheless, the applicant's interest in legal protection cannot be denied. His conviction that an AI must be considered as inventor in the same way as a natural person and that the designation of a corresponding system as inventor must be permissible reflects a legal opinion which is meanwhile regarded as justifiable by some voices. For the Australian patent law system, the Federal Court of Australia has in the meantime affirmed the possibility of designating an AI as inventor in a decision of July 30, 2021 (cf. Ref.: VID 108 of 2021). Against this background, it appeared unreasonable to the 11th Senate of the BPatG to deny the applicant the present prosecution from the outset on the grounds that he would have had the possibility at any time (even if contrary to his own conviction) to designate himself as inventor.

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