*Breaking?* First decision of the BGH on AI

The Federal Court of Justice confirms: AI cannot be an inventor

In its most recent decision X ZB 5/22 of 11 June 2024, the Federal Court of Justice (BGH) made a clear statement: Artificial intelligence (AI) cannot be recognized as an inventor within the meaning of patent law. This groundbreaking decision is in line with previous case law and confirms the prevailing opinion that only natural persons can be considered inventors.

Key statements of the BGH

The BGH formulated several important guiding principles in its ruling:

(1) “Only a natural person may be designated as an inventor within the meaning of the Patent Act.”

2. “An artificial intelligence does not meet the requirements to be recognized as an inventor because it is not a legal entity.”

3. “The designation of an AI as inventor leads to the rejection of the patent application.”

(4) “The human developer or user of an AI may be designated as the inventor if he or she has made a substantial creative contribution to the invention.”

These guiding principles underline the position of the BGH that the human mind is still at the center of the invention process.

Implications for authorship

The decision of the BGH is in line with the view that AI cannot be an author within the meaning of copyright law. Both areas of law require human, intellectual creation, which a machine – however intelligent it may be – cannot achieve. This has far-reaching consequences for creatives and developers who use generative AI in their work processes.

The DABUS case and international perspectives

At the center of the debate is the AI system DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), developed by Dr. Stephen Thaler. DABUS has been named as an “inventor” for patent applications in various countries, including a new type of food container and a flashing light for emergencies. These applications have caused a worldwide stir and raised the question of whether AI can be recognized as an inventor.

Patent offices and courts worldwide have rejected applications with DABUS as the inventor. The European Patent Office (EPO) has confirmed in its decision that the inventor named in a patent application must be a human being under the European Patent Convention (EPC). Similar decisions were made in the USA and Great Britain.

Impact on developers and creatives

This case law has important implications for game developers, software developers and authors who use generative AI in their creative processes:

1. authorship and inventorship: The use of AI tools does not change the fact that the human developer or author is considered the author or inventor. AI remains a tool, similar to a word processing program or graphics software.

2. responsibility for output: Developers and authors are responsible for the output generated by the AI. You must ensure that no third-party rights are infringed and that the output meets the desired quality standards.

3. documentation of the creative process: It may be advisable to document the use of AI tools in the creative process in order to be able to prove the human contribution in case of doubt.

4. new testing methods: In software development in particular, the use of generative AI requires new approaches to testing in order to ensure the quality and reliability of the generated code.

5. increasing productivity: Despite legal restrictions, generative AI offers enormous potential for increasing productivity in creative areas.

Conclusion and outlook

The decision of the BGH and similar rulings worldwide underline that the human mind is still at the center of the innovation and creation process. Generative AI is a powerful tool that can support and enrich the work of developers and creatives, but it does not replace human creativity and ingenuity.

It will be interesting to see how case law develops in the future, especially in view of the rapid advances in AI technology. For the time being, however, one thing remains clear: AI can be neither inventor nor creator – these roles are reserved for humans. Developers and creatives should always keep this in mind when using AI tools and document and highlight their own creative contribution accordingly.

Author: Marian Härtel

Marian Härtel ist Rechtsanwalt und Fachanwalt für IT-Recht mit einer über 25-jährigen Erfahrung als Unternehmer und Berater in den Bereichen Games, E-Sport, Blockchain, SaaS und Künstliche Intelligenz. Seine Beratungsschwerpunkte umfassen neben dem IT-Recht insbesondere das Urheberrecht, Medienrecht sowie Wettbewerbsrecht. Er betreut schwerpunktmäßig Start-ups, Agenturen und Influencer, die er in strategischen Fragen, komplexen Vertragsangelegenheiten sowie bei Investitionsprojekten begleitet. Dabei zeichnet sich seine Beratung durch einen interdisziplinären Ansatz aus, der juristische Expertise und langjährige unternehmerische Erfahrung miteinander verbindet. Ziel seiner Tätigkeit ist stets, Mandanten praxisorientierte Lösungen anzubieten und rechtlich fundierte Unterstützung bei der Umsetzung innovativer Geschäftsmodelle zu gewährleisten.