## Facts

- Stephen L. Thaler filed a German patent application (Oct. 2019) for a food or beverage container with a fractal wall structure.
- On the inventor designation required by Patent Act § 37(1), Thaler listed the AI system “DABUS” as inventor and did not name any natural person.
- The German Patent and Trademark Office (DPMA) refused the application for failure to properly designate an inventor, reasoning that only a natural person can be an inventor.
- During proceedings, Thaler proposed alternatives: (1) no inventor designation because AI generated the invention; (2) name Thaler as inventor and add that the invention was “created by” DABUS; or (3) name Thaler as inventor and state he “prompted” DABUS to generate the invention.
- The Federal Patent Court held AI cannot be an inventor but allowed variant (3), set aside the refusal, and remitted to the DPMA.
- The DPMA President sought review on points of law challenging acceptance of variant (3); Thaler cross-sought review pressing for recognition of DABUS as inventor or an express “generated by AI” designation.

## Issues

1. Whether Patent Act § 37(1) permits naming an AI system as “inventor.”
2. Whether a compliant inventor designation may include a request to state that the invention was “generated” or “created” by AI.
3. Whether a compliant inventor designation may be supplemented with a statement that the named inventor prompted or used a specified AI system to generate the invention.

## Decision

- The Federal Court of Justice rejected both the DPMA President’s appeal and Thaler’s cross-appeal, affirming the Federal Patent Court.
- The court held that only a natural person can be an inventor under § 37(1); a machine system cannot be named inventor even if it uses artificial intelligence.
- The court held that naming a natural person as inventor remains required even when AI was used to arrive at the claimed teaching.
- The court held that naming a natural person as inventor is insufficient under § 37(1) if the applicant simultaneously requests an official note that the invention was “generated” or “created” by AI.
- The court held that adding a statement that the named inventor caused a specified AI to generate the invention (e.g., by prompting it) is legally irrelevant but cannot justify refusal under § 42(3).

## Legal Principles

- “Inventor” in the Patent Act is limited to natural persons because the Act treats the inventor as a bearer of rights and duties and as the holder of a personal right to be named.
- The statutory scheme does not contain an unintended gap allowing courts to extend inventorship to AI; any change would require legislation.
- The inventor-designation requirement serves (1) the inventor’s right to be named and (2) transparency for entitlement and chain-of-title questions; these functions are not met by naming AI or by wording that shifts inventorship to AI.
- A request to record that an invention was “generated” or “created” by AI is incompatible with § 37(1) when it casts doubt on the named human’s inventorship.
- A clear designation of a natural person as inventor satisfies § 37(1) even if accompanied by an additional, non-dispositive statement that the person used or prompted a specified AI system.

## Conclusion

The court confirmed that German patent applications must name a natural person as inventor and may not list AI as inventor; attempts to characterize the invention as “generated/created by AI” are inconsistent with the inventor-designation requirement, but a non-dispositive note that the named inventor prompted or used a specified AI tool cannot be used to refuse the application.


President of the German Patent & Trademark Office v. Thaler, X ZB 5/22 (BGH 2024)