A procedure discussed at the Israeli Patent Authority, before the Registrar of Patents Adv. Ofir Alon. On 03.15.23 the decision was given in the case.
Parties: Applicant: Dr. Stefan L. Thaler.
The main facts:
Dr. Thaler submitted two applications for patent registration – Application No. 268604 entitled “Devices and methods for applying increased attention” and Application No. 268605 entitled “Food container”.
The following details appeared in the application forms: “Applicant’s name: “Stephen L. Thaler”; “Names of the inventors: DABUS – Invention was autonomously generated by an artificial intelligence”; “Inventor of power: assignment”.
The examiner refused to accept the patents for examination on the threshold claim that there is no human inventor for these patents as required by law.
In light of the examiner’s refusal to register the patent applications, the applicant submitted a request to voice his claims before the patent registrar.
Results of the procedure:
Access denied. It was determined that the examiner was right when he determined that according to the data provided by the applicant that it is not possible to accept the inventions for registration since there is no human inventor.
Our review of the current situation:
From the review that will be presented below and the various procedures regarding DABUS, it can be seen that as of today, artificial intelligence machines cannot be considered as inventors in most countries of the world. This approach may lead to a situation where applicants will not disclose in the patent application the role of the artificial intelligence machine in the creation of the invention so that the patent application will not be rejected. On top of that, because inventions created by artificial intelligence machines cannot be patented, inventors may keep the inventions secret, undermining the main purpose of patent laws which is to encourage innovation and encourage the discovery, commercialization and development of inventions.
The current patent system does not encourage inventors in the field of artificial intelligence to share the information in their possession. Companies and inventors in this field have an incentive to avoid revealing the information in their possession regarding the artificial intelligence software they have created. The current interpretation even excludes the possibility of any ownership in relation to inventions created by artificial intelligence, this interpretation, although it emerges from the language of the law, is essentially contrary to the purpose of patent law, which is intended to reward inventors and motivate them to invent effective and useful inventions that will increase the general well-being of the public by virtue of their availability.
We believe that in order to encourage inventors to share the information in their possession, they should be given sufficient protection for their investment in the development of artificial intelligence and for this purpose there is room for amending the provisions of the law so that they allow the registration of artificial intelligence as an inventor and allow the transfer of the rights of an inventor of the type of artificial intelligence to a person or company that is the owner of that artificial intelligence. (For more information, see in the book: Y. Drori, “Patent Laws”, Perlstein Ginoser Publishing, pp. 313 to 332 (2023))
Key points discussed in the procedure:
Details of the facts – DABUS’ attempt to register as a patent inventor in Israel
Dr. Thaler submitted two applications for patent registration – Application No. 268604 entitled “Devices and methods for applying increased attention” and Application No. 268605 entitled “Food container”.
The following details appeared in the application forms: “Applicant’s name: “Stephen L. Thaler”; “Names of the inventors: DABUS – Invention was autonomously generated by an artificial intelligence”; “Inventor of power: assignment”.
An appendix entitled “INVENTORSHIP ON STATEMENT” was attached to the application, in which the applicant clarified that the inventor DABUS is a machine based on artificial intelligence. In the appendix, it was explained that the process of inventing by the machine includes two stages: (a) the creation of new ideas by an artificial neural network trained using general information from diverse worlds of knowledge; and (b) selecting ideas that are new enough in relation to previous knowledge from those generated by the machine in step A, with the help of a second artificial neural network.
Also, it is claimed that the law in Israel does not expressly prohibit granting protection to inventions made by automatic machines.
In December 2020, the applicant was sent two notices prior to refusal stating that the applicant does not have the inventions as required by law. That is, the applicant is not the inventor and did not receive the ownership in one of the ways prescribed by law. Therefore, the inventions are not eligible for registration as patents according to Section 2 of the Patent Law.
In June 2021, an interview was held by the patent examiner with the applicant’s attorney. In the interview, the attorney for the applicant claimed that recognition of the merit of inventions created by a machine would stimulate the development of such machines, and therefore the provisions of the law should be read in such a way as to allow the protection of means invented by artificial intelligence.
Regarding his right to the invention, the applicant claimed that there is no need to transfer ownership between the machine and the applicant. According to the common law doctrine of possession first and accession, the applicant has a right of ownership in the inventions from his ownership of the machine that created the inventions. Therefore, the applicant must be considered as someone who comes from the power of the inventor (the machine) and is entitled to inventions by operation of law according to Sections 1 and 2 of the Patent Law.
In December 2021, the applicant was sent two rejection notices for the patent applications. In the notices, the patent examiner presented three questions: (a) Can the machine be considered an inventor according to the law? To this question the examiner answered in the affirmative; (b) Is the owner of the machine entitled to its inventions? To this question the examiner replied that the owner of the machine has legal rights to the inventions made by the machine; (c) Is entitlement to an invention enough to be entitled to request a patent for the invention? To this question, the examiner replied that these rights do not include the right to apply for a patent because, according to the language of the law, the right to request ownership of an invention accrues to the inventor or his successors. The examiner interpreted the following words by his power as “power legal” and the machine does not have “power legal” and cannot come by its power.
In light of the examiner’s refusal to register the patent applications, the applicant submitted a request to voice his claims before the patent registrar.
The obligation to indicate in the application form the source of the patent applicant’s right
Unlike other places in the world, in Israeli law there is no obligation to indicate the names of the inventors in the application form or after it has been submitted.
Section 11 of the Patent Law states that the applicant is required to show in the application the source of his right to apply for the patent (if the applicant is not the inventor).
The term “owner of the invention” is defined in section 1 of the Patent Law as “the inventor himself or his successors and they are the ones who are entitled to the invention by operation of law or by transfer or by agreement”.
The answer to this requirement is done by filling in the field “Owner of a valid invention” in the application form. In this field it is customary to indicate whether the source of the applicant’s right to the invention is by virtue of law (eg inheritance or service invention), agreement or transfer.
According to Section 20 of the Patents Law, if the applicant does not comply with the requirements in point A of Chapter C, the examiner or the registrar must notify the applicant of a deficiency in the application. If the deficiency is not corrected, this will lead to the rejection of the application in accordance with Regulation 45 of the Patent Regulations. Section 11(b) of the law is one of the requirements set forth in point A of Chapter III.
The patent registrar emphasized that in order to comply with this requirement, it is not enough for the inventor to indicate any source on the form, but the source must be one of the sources listed in the definition of “owner of the invention” in the Patent Law – by virtue of transfer, agreement or by virtue of law.
Interpretation of the terms “inventor” and “the owner of the invention” in the Patent Law
In several sections of the Patent Law, the term “inventor” is used, but this term is not defined in the law. In particular, it is not specified whether the inventor must be a human being.
The starting point for interpreting a law is the language of the law, and in particular the natural meaning of the language of the law.
The examiner believed that there is no obstacle for a machine to be included in the definition of “inventor” in the patent law. In this determination, the examiner relied on the definition of the word “inventor” in the Avneon dictionary: “a creator, who discovers something new: an invention is registered in the name of the inventor”, and mainly on the fact that there is no contradiction between this expansive interpretation and the purposes of the Patent Law.
The patent registrar did not accept the examiner’s position because according to the definition in the Avneon dictionary, the natural meaning of the word inventor includes a machine. The fact that the definition of an inventor in the Avneon dictionary does not explicitly state that an inventor is a human being does not, in itself, show that the usual meaning of the word “inventor” also includes a machine.
The registrar explained that he believes that the definition in the dictionary assumed that an inventor is always a human being because until recently there was no other option.
In fact, the example given in the dictionary definition “an invention is registered in the name of an inventor”, shows that this is the case. The intention is that the invention is registered in the name of the person who invented it – until recently the possibility of registering an invention in the name of a machine did not arise. A member of the public reading this definition will not interpret it to mean that the invention is registered under the name of the machine that invented it.
Similarly, the definition of the word doctor in the Abneon dictionary does not explicitly state that it is a person, but there is no doubt that the usual meaning refers to a person.
This conclusion is reinforced by the definition of the word “inventor” in English which is defined as follows in the Oxford dictionary: “a person who has invented something or whose job is inventing things”.
There is no basis for thinking that the meaning of the word “inventor” in Hebrew includes both a machine and a human being when the meaning of the word in English refers only to a human being.
Even in the few places where the word “inventor” is mentioned in the patent law, the reference is to a human being who invented.
Sections 40 and 42 of the Patent Law deal with the moral right of the inventor which does not belong to non-human inventors. In these sections, the law attributes to the inventor actions such as “requires” or “waives” which are used, usually, when referring to humans. Also the meaning of the term “survivors” of “inventor” in section 40 is “a family member who remains alive after the death of his relative and has the right to divide the inheritance”.
From the above it follows that the term “inventor” in the Patent Law refers in its usual sense to a “human being”. The applicant claimed that unlike other places in the world, the law in Israel does not require the applicant to specify who the inventor is. The registrar explained that this claim is true, but it does not change the fact that the simple interpretation of the word “inventor” in the law is a human being.
Section 1 of the Patent Law defines the term “owner of an invention” as “the inventor himself or his successors and they are the ones who are entitled to the invention by operation of law or by transfer or by agreement”.
Section 2 of the law states that the right to request a patent for the invention is given to the “owner of the invention”.
The words “who is entitled to the invention by operation of law or by transfer or by agreement” in section 1 of the law are an interpretation of those who come by the power of the inventor.
The definition of the term “inventor” proposed in the 1965 patent bill did not include the words “coming from his power”.
At the meeting of the Knesset plenum in which the patent law was approved in second and third reading, the addition of the words “coming from his authority” was explained – “to emphasize and stress that the main protection is for the inventor”. Further it is written that an additional protection of the inventor’s right introduced in section 11 requires the applicant for a patent, when he is not the inventor, to inform in the application who the owner of the invention was. It was explained that in this way “the registrar can insist on a rollover of the invention from the inventor to the patent applicant, and thereby preserve the rights of the inventor to the extent that they have been impaired”.
The registrar explained that these words emphasize the fact that the starting point of the law was that the right of the inventor to request a patent was transferred to him from the inventor in the ways detailed in the section. The applicant does not dispute that the words “coming from his power” indicate a relationship between the owner of the invention and the inventor, but according to him an inventor is not necessarily a human being. The registrar did not accept this claim.
Summary: The registrar explained that according to the law, every invention begins with the inventor, who is a “human being”, and from him the right to the owner of the invention is derived.
Purposeful interpretation
The applicant claims that according to the language of the law, the law can be interpreted in a way that allows for the protection of inventions made by artificial intelligence, and that this interpretation is consistent with the purpose of the legislation, which is to encourage innovation and encourage inventors to reveal their invention to the public in exchange for a time-limited monopoly. He claimed that it makes no difference whether the invention was created by a machine or by a human being, and if no protection is given to these inventions, the incentive to develop such machines will decrease, the incentive of machine owners to keep their products as a trade secret will increase, and the development of products that cannot be kept as a secret will not continue because They cannot be protected.
The examiner accepted this position but refused to register the requests on another behalf.
The registrar explained that the applicant’s claims are weighty, but the expansion of the protection stipulated in the law raises various policy questions that must be left to the legislator’s decision.
The registrar explained that at the point where we are now, the assumption that protection through patent law for inventions made by a machine will fulfill the purposes of patent law is not agreed upon by everyone and raises many questions in different contexts.
The registrar explained that even if he had the answers to these questions, it could not be determined that accepting the applicant’s position would lead to the fulfillment of the purposes of the intellectual property laws, which concern the dissemination of knowledge and the encouragement of innovation, because it is not possible to talk about the achievement of these purposes without referring to the international aspect of the intellectual property laws.
Patent law in Israel applies the binding principles established in the international frameworks that regulate various aspects of intellectual property law in general and patent law in particular, and many times they rely on similar arrangements in comparative law. When the patent law was enacted, an effort was made to adapt the law to these principles.
Currently, there are no accepted rules for the protection of inventions made by artificial intelligence without a human inventor, and most of the countries where the matter was discussed refused to register a patent for an invention made without any human involvement. The registrar explained that even if the applicant is correct in his claim that the protection of the products of machines that create inventions through patent law is the right policy tool to encourage the creation of such machines and the disclosure of their products to the public, it is doubtful whether the protection of such inventions by a small number of countries will fulfill the purpose of intellectual property laws. Therefore, in the absence of international agreement regarding the proper arrangement in this matter, it would not be correct to defend this in Israeli law by way of statutory provisions.
Such anchoring will also create asymmetry between the State of Israel and other countries, and will lead to a situation where, while the inventions that are the subject of the patent application are in the public domain in most countries of the world, they will be subject to exclusive rights granted by patent protection in Israel only. In conclusion, the registrar explained that recognition of artificial intelligence as the inventor of an invention made without any human involvement should be left to the legislator who will decide the policy questions and with reference to comparative law and international standards, and this in light of the global nature of the field of intellectual property on the one hand and the characteristics of the economy and industry in Israel on the other.
Doctrine of Accession
The applicant claimed that his right to an invention originated in the Doctrine of Accession. This doctrine, which originates in English law, states that the owner of the tree is entitled to its fruits. Due to the fact that the question of applicability of the Doctrine of Accession to intangible assets is a precedent question, the examiner applied for an opinion from the Department of Hebrew Law in the Counseling and Legislation Department of the Ministry of Justice. According to the opinion, the Doctrine of Accession applies, according to Hebrew law, also regarding intangible products of a tangible object owned by a person.
The registrar explained that from the above it appears that there is no need to decide on the applicability of the Accession doctrine in this matter. Even if the doctrine applies in this matter, it is not a law that gives the applicant the right to apply for a patent because the owner of the invention according to the patent law is a person who acquired his right to the invention from a human inventor.
The situation in the world
Parallel patent applications have been submitted for registration by the applicant in several patent offices around the world. The registrar briefly reviewed the main reasons for the decisions given in the various countries.
United States
The United States Federal Court of Appeals rejected the applicant’s appeal of the Virginia court’s decision to reject the applicant’s appeal of the patent office’s decision to refuse to register the patent applications he submitted.
Section (f)100 of the US Patent Law defines the term “inventor”:
“The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention”
The Federal Court ruled that even though there is no definition of the expression “individual” in the patent law, the daily use of this expression indicates an intention for a human being only, and inventions made by a machine should not be accepted for registration.
The Federal Court rejected the applicant’s claims according to which policy considerations require the recognition of artificial intelligence as an inventor and the registration of patents for inventions made by artificial intelligence without human assistance. The court considered that the policy considerations presented by the applicant are “speculative” and in any case the language of the law is clear and therefore there is no room for the court to deviate from it.
England
The Court of Appeals determined that the definition of the phrase “inventor” in the English patent law includes only a human being and cannot include a machine.
The majority opinion believed that sections 7 and 13 of the English law oblige the applicant to indicate a human being as the inventor and the source of his right to the invention. The applicant indicated a machine as the inventor, and did not indicate a legal source for his right to the invention, so the English Patent Office was right when it refused to register the invention as a patent.
The minority opinion held that although according to English law an inventor is a human being, the purpose of providing the information to the registrar is to reflect the information to the public by the registrar. It is not the registrar’s job to verify the correctness of the statements made by the applicant when he submitted the patent application. Therefore, although the definition of an inventor according to English law does not include artificial intelligence, it must be established that the applicant met all the formal requirements in submitting the applications and return the applications to the Patent Office for substantive examination.
The English court also discussed the applicability of the Accession doctrine. Judge Arnold opined that this doctrine does not apply to intangible property such as inventions, because intangible property does not have exclusive possession which is the basis of the Doctrine of Accession. That is, although the applicant is the sole owner of the tangible object, the computer on which the DABUS machine operates, it should not be concluded that he is the owner of the intangible fruits of the machine – its inventions.
European Patent Office
In October 2018, the applicant submitted two patent applications to the European Patent Office in which he named DABUS as the inventor. The applicant claimed the rights in both inventions due to being the owner of the machine or the successor of the inventor.
The European Patent Office rejected both applications because the term “inventor” as defined in the European Patent Convention (EPC) refers only to a human being. It was also clarified that a machine is not a legal entity that can transfer any rights to the applicant. Therefore, it was determined that the applicant did not fulfill his obligations to indicate who the inventor is in the patent application and indicate his right to submit the application. The applicant’s appeal against this decision was rejected by the Board of Appeal, which stated that the ordinary meaning of the phrase “inventor” is a human being with legal capacity and this is how the EPC should also be interpreted.
The applicant claimed that he had the right to the invention by virtue of being the creator of the machine. The Board of Appeal ruled that this does not refer to a legal situation or a transaction that makes the applicant the successor of the inventor within the meaning of the EPC.
The registrar explained that this reasoning is similar to the reason why the applicant does not meet the definition of “owner of an invention” according to Israeli law – he did not acquire his right from a human inventor.
Also, the Board of Appeal stated that the EPO is required to examine the information provided by the applicant in response to the request to indicate the name of the inventor in the application or the source of the right to submit the application and that this information must be compatible with the EPO’s requirements. That is, if the EPC requires a human inventor to be specified, a statement that the inventor is not human must not be accepted, and if the EPC requires that the applicant acquire his right from a human inventor, the applicant must provide information that meets this requirement, otherwise he will be deemed to have failed to meet it.
As for the applicant’s claim that refusing to register patents made by artificial intelligence constitutes discrimination against inventions of a certain type, the Board of Appeal explained that it is not aware of any ruling that would prevent the user or the owner of a machine involved in an inventive activity from defining himself as an inventor according to European patent law. Also, the Board of Appeal explained that it is the role of the legislature to amend the EPC.
Australia
The Australian Patent Office refused to register the patent applications because the applicant did not name a human inventor as required by law. The appeals court for the registrar’s decision accepted the applicant’s appeal and ordered the applications to be registered in his name. The Federal Court accepted the Registrar’s appeal against this decision and ruled that under Australian law the inventor must be human.
Germany
In Germany, the patent application continued to be examined after the applicant added himself as an inventor to the application.
