The Registrar's Decision
- The starting point in the decision of the Registrar of Patents is in accordance with the appellant's factual position (hereinafter also referred to: The Applicant) in the documents and in the hearing – that the appellant is not inventing the inventions for which the patent applications were filed, and that these were invented by the machine, DABUS, without human involvement. At the same time, the appellant states that he is the inventor of the machine and the owner of the rights to it, including its software and output.
- The Registrar referred to the provisions of the law, legislative history, and more. In its decision, it was noted and found, among other things:
- Section 20 of the Patents Law states that if a registrar or examiner considers that an invention is not eligible for a patent or that the application does not comply with the provisions in paragraph A of that chapter, the applicant shall be notified of the cause or defects. Provision 11(b) of the Law, which stipulates that an applicant must show the source of his right, is found in paragraph A of the same chapter in which section 20 is found, and therefore, if there is a difficulty regarding the fulfillment of section 11(b), it is a defect in the application that must be notified to the applicant.
- According to Section 11(b) of the Law, an applicant who is not the inventor himself is required to notify "how the owner of the invention was". In light of the definition of an "invention owner", the source of the right that can be specified in a patent application can be only one of the following: "by virtue of the law", "by transfer" or "by agreement".
- The interpretation of the term "inventor", a term that has no definition in the law, begins with the language of the law and in particular with its natural meaning.
- The ordinary and natural meaning of the word "inventor" refers to a person, a human being. The definition in the dictionary does not indicate that the natural meaning of the word includes a machine (in this regard, the Registrar did not accept the examiner's position that the word inventor suffers from an interpretation that relates to a machine as an inventor).
- The few places in the Patent Law where "inventor" is mentioned attest to the fact that the reference was to a human being: the right to mention the name of the inventor, the law's reference to the "survivors" of an inventor, and a reference to a case in which the inventor "demands" or "waives".
- Israeli law does not require a patent applicant to specify who the inventor is, but this does not change the fact that the simple interpretation of the word "inventor" in patent law is a human being.
- The legislative history of section 11(b) of the Law, in the context of the addition of the words "coming by virtue of it", emphasizes the fact that the starting point of the law is that the right of an invention owner to apply for a patent has been transferred to him from the inventor in the ways detailed. According to the law, every invention begins with an inventor who is, as stated, a human being, and can be passed into the hands of an inventor who is not the inventor, in ways that are mentioned in the definition of "inventor."
- The way indicated by the applicant (the appellant) in the patent applications as the way in which the owner of the invention had is "transfer". However, even according to him, DABUS does not have the capacity to carry out a legal action of transfer of rights.
- The Applicant claims that the owner of an invention had "the power of law", with the relevant law being a doctrine of common law known as the "Doctrine of Accession".[1] According to the Applicant, he has a right of ownership of the inventions from his ownership of the machine that created them, and in fact there is no need at all for the transfer from the machine to him. There is no need to decide the question of the applicability of the said doctrine in our case, since even if you say that the doctrine has applicability, it cannot constitute a law that grants the applicant the right to file a patent application, since the owner of an invention under the Patents Law acquires his right in the invention from a human inventor.
- The decision presents the Applicant's arguments regarding purposive interpretation. The Applicant argued that an interpretation that would enable the protection of inventions made by artificial intelligence is possible under the language of the law and is consistent with the purpose of the legislation to encourage inventors to disclose their invention to the public in exchange for a time-limited monopoly. According to the Applicant, if protection is not given to inventions created by a machine, the incentive for the development of such machines will be reduced, the incentive of machine owners to keep their products as a trade secret will increase, and products that cannot be kept as secrets due to the lack of possibility of protecting them will not be developed.
The Registrar noted that the Applicant's arguments are weighty, but that the expansion of the protection set forth in the Law raises policy questions that should be left to the legislature to decide. The decision also noted that the position that patent protection for inventions made by a machine will fulfill the purposes of patent law is not universally agreed upon and raises many questions in various contexts.