By David Hricik, Mercer Law School
I’ve written a few posts about how I used specif.io to draft a patent application: I submitted a claim I’d found in a published application and the service drafted a 15-page spec, and created two figures. Plainly, I invented nothing but assume for a moment I’d invented what had been claimed and that there was more disclosed in the spec than what I’d invented — the latter I think is fact but let’s assume it. Let’s also assume that I add claim 2 once I see the machine has conceived of something more than I had thought of. So: claim 1 is my invention; claim 2 is not. I hire you to represent me.
The USPTO, the EPO, and the UKIPO have all stated (here, here, and here in respective orders) that only natural people can be inventors. Fair enough. The USPTO has stated that a person who is not an inventor cannot be named. Also fair enough, because of the statute and 102(f). So… what do you do?
With my hypo, I think you have to name me since I invented what was in claim one. I guess you don’t have non-joinder because the machine invented whatever else is in the spec and you can’t name it.
Now let’s turn to the facts of the application the USPTO rejected: the inventor took the position that only a machine was the inventor. So, let’s assume that fact pattern: AI invented what was in claim 1 and also what was in claim 2.
Now what? That may explain why the EPO and UKIPO, at least, are studying this further and WIPO and AIPLA committees are, too. Thoughts?