DC IP Lawyers Take Note: USPTO Issues Guidance on AI Tools in Patent Practice
On April 11, 2024, the United States Patent and Trademark Office (USPTO) released comprehensive guidance concerning the utilization of artificial intelligence (AI) based tools in patent practice. Referred to hereafter as the Guidance, this publication addresses various aspects of employing AI, including generative AI, within the patent application process. Acknowledging the advantages AI presents, the USPTO emphasizes that although practitioners aren’t obligated presently to disclose the use of AI as a drafting aid, several responsibilities arise when utilizing such tools. The Guidance elucidates current USPTO policies and delineates how these regulations intersect with the application of AI tools. Below, we’ll delve into different applications of AI tools and provide a synopsis of potential risks outlined by the USPTO.
Utilizing AI Tools for Drafting or Filing Patent Specifications, Claims, or Office Action Responses:
Invention Creation Process with AI Tools
When incorporating AI tools in the invention development phase, it’s imperative to ensure that each claim retains significant inventor contribution, as outlined in the Inventorship Guidance for AI-Assisted Inventions (89 FR 10043). Should uncertainty arise regarding the extent of the inventor’s contribution, disclosure to the USPTO becomes necessary. The duty of disclosure mandates practitioners to divulge information pertinent to patentability. Similarly, practitioners must refrain from filing or prosecuting patent claims known to be unpatentable.
AI Tools in Document Filing and Proceedings
All submissions to the USPTO must bear the signature of a natural person. By affixing their signature, practitioners assume the responsibility to thoroughly review and validate the document’s contents. Relying solely on AI tool accuracy is deemed unreasonable. Practitioners must verify the accuracy of information provided, recognizing that AI tools may occasionally generate erroneous or misleading data.
AI Tools in Populating Information Disclosure Statements (IDS)
While AI tools can assist in compiling prior art references for IDS submissions, practitioners must exercise diligence in reviewing and filtering relevant references. Submitting an IDS without meticulous review not only contravenes regulatory duties but also risks overburdening examiners.
AI Tools in Document Filing Procedures
While AI may facilitate document filing, practitioners must adhere to USPTO policies governing electronic filing systems. Signatures must originate from a natural person, and access to the USPTO’s EFS system is restricted to individuals with a USPTO.gov account.
Additional Concerns Arising from AI Tool Utilization:
Confidential Information Disclosure
Practitioners should be vigilant regarding the disclosure of confidential information when utilizing AI tools. Confidential data inputted into AI systems may be retained by vendors or incorporated into training data, posing risks of inadvertent disclosure or unauthorized access. Adherence to client confidentiality obligations is paramount.
National Security Implications
The use of AI tools hosted on servers outside the United States may raise national security and foreign filing license concerns. Compliance with USPTO regulations, including obtaining foreign filing licenses, is essential when utilizing AI tools with international server hosting. Practitioners must comprehend privacy and cybersecurity terms to mitigate potential risks associated with data breaches.
DC IP Lawyers are advised to carefully navigate the complexities outlined in the USPTO’s Guidance, ensuring compliance and safeguarding client interests when employing AI tools in patent practice.