- The applicant was required to name the inventor in his
application. By naming the AI system as the inventor, he failed to
comply with this requirement.
- There is no definition of "inventor" in the Act or in
the accompanying regulations. As such, the word bears its ordinary
English meaning. As any standard dictionary shows, the traditional
meaning of "inventor" is a person who invents. At the
time that the Act came into operation in 1991, there would have
been no doubt that inventors were natural persons, and machines
were just tools that could be used by inventors.
- It would be inconsistent with the provisions of the Act to
extend the ordinary meaning of "inventor" now to include
machines. In particular, section 15(1), which stipulates when a
person may be granted a patent, would become unworkable because it
would not be possible to identify a person who could be granted the
patent.
- For example, section
15(1)(a) states that a patent may be granted to a
person who is an inventor. Since an AI system is not a person, this
section cannot apply if the AI system is taken to be the
inventor.
- Section
15(1)(b) provides that a patent can be granted to a
person who "would, on the grant of a patent for the
invention, be entitled to have the patent assigned to
them". An AI system would be unable to assign a patent to a
person under this section because property law does not presently
recognise the capacity of an AI system to assign property.
- Section
15(1)(c) states that a patent can be granted to a
person who derives title to the invention from the inventor. For a
person to derive title from the inventor, the title must first vest
in the inventor. It is not possible for the title to first vest in
an AI system, since a machine cannot have a beneficial interest in
a patent.
- If parliament wishes to recognise that an AI system can be an
inventor for the purposes of the patent system, it is free to amend
the law to cater for this type of technological innovation.
However, as this scenario is not reflected in the current statutory
scheme, the court is required to uphold the Deputy
Commissioner's decision.
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- I provided the name of the inventor, the AI system, on my
patent application form as was required. Therefore, the Deputy
Commissioner's determination that my application was
non-compliant is incorrect.
- In its ordinary English meaning, "inventor" includes
a machine. "Inventor" is an agent noun, meaning a noun
denoting someone or something that performs the action of a verb.
Here that something is the AI system, making it the inventor of the
invention.
- The Commissioner has misconstrued the Act and regulations, as
nothing in them precludes an AI system from being treated as an
inventor. I accept that an AI system is not capable of owning or
assigning a patent. However, it is still possible to apply section
15(1) of the Act to the circumstances of this case.
- Under section 15(1)(b), an inventor does not need to have the
capacity to assign property. This section has been applied to
employee inventions where there is no contract in place that sets
out the employer's entitlements. While the employee cannot
assign the property, the employer is still able to apply for a
patent for the employee invention made in the course of the
employee's duties. Similarly, section 15(b) can be applied in
circumstances where a third party misappropriates an employee
invention and the inventor's employer brings an action seeking
equitable assignment from the third party. In such a case the
inventor would not be a party to this equitable assignment.
- Section 15(1)(c) can also be applied to the circumstances of
this case. The general rule under common law is that the owner of a
thing is the owner of the fruits of that thing (principle of
accession or first possession). I possess, own and control the AI
system; therefore I own the fruits of the AI system, meaning that
title to its invention automatically vests in me.
- Since the AI system is an "inventor" under the
current patent scheme, my patent application was compliant, and the
court must overturn the Deputy Patent Commissioner's
decision.
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