The Appeal
- In the notice of appeal, it was argued that the Registrar erred in determining that an "inventor" under the law is supposed to be a human being; In his rejection, the examiner accepted the position that the word "inventor" also included a machine; by not applying rules of purposive interpretation in light of the purpose of patent law to encourage innovation and to incentivize inventors to discover their invention; that he did not take into account systemic considerations for regulating the field of inventions and the purity of the register; by failing to decide the question of applicability Doctrine of Accession; that they give excessive weight to the rejection of parallel applications in other countries; And more.
- According to the respondent, it is lawful to reject the appellant's arguments and leave the decision in place. The respondent's response referred to the body of the appeal's arguments.
- A request to join the proceeding was filed as an "amicus curiae" on behalf of the Shalom Institute for Comparative Research, from the Eliyahu Center for Law and Technology at Ono Academic College.
The appellant also filed a motion to add additional evidence.
- An oral hearing was held in the appeal in which arguments were raised, positions were clarified, and various questions were discussed in the context of the appeal.
Discussion
Preliminary Note
- According to Israeli law, a person who files a patent application is not obligated to mention the name of the inventor in the application. The appellant addressed this issue in his arguments, seeing it as a uniqueness of the local law that can allow for a different result than that obtained in other countries and legal systems.
- Indeed, on a principled level, it is possible in Israel to specify only the name of the patent applicant and not the name of the inventor. However, despite the absence of the obligation to do so, the appellant stated in the patent applications "the name of the inventor", and wrote the name of the machine. This led almost immediately to a discussion of whether A machine can be an inventor according to Israeli patent law.
- If the name of an inventor had not been specified, a patent eligibility examination might have been conducted; In other words, an examination of whether the conditions of the Section 3 The law states that an invention is patentable if it is "New, useful, industrially usable, and inventive advances". No such examination was made in our case.
It is possible that such an examination would have led more directly to a discussion of substantive questions on the issue of the chapter, including whether and to what extent human involvement is necessary in the operation of artificial intelligence in order to provide protection under patent law, how inventions that were "invented" by artificial intelligence should be treated, and more (compare: Dr. Thaler's application to the US Copyright Registry regarding an image created by another artificial intelligence machine developed by him ("Creativity Machine").") in which the machine is mentioned as the creator and he himself as the owner; His request was rejected by the United States Copyright Office, as a creator must be human. The dismissal was upheld by the courts, including the United States Court of Appeals for the District of Columbia[2].