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On October 30, 2023, President Biden issued the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence. This Executive Order called upon the Federal Government to enact and enforce protections as to AI-related harms, including “in critical fields like healthcare, financial services, education, housing, law, and transportation,” while promoting responsible uses of AI.

In response, on April 11, the United States Patent Office (USPTO) issued Guidance on Use of Artificial Intelligence-based Tools in Practice Before the United States Patent and Trademark Office. The guidance reminds practitioners about existing rules and policies that may be relevant to the use of AI tools. The guidance is aimed to help educate practitioners on possible risks presented by the use of AI tools so that practitioners can mitigate these risks. The guidance can be found at the following link: USPTO AI Guidance.

Use of Computer Tools for Document Drafting

Computer tools are commonplace in the IP industry. Recently, these tools have begun adopting generative AI features that can develop a written document with much less human involvement. For example, AI-based tools can be used to draft technical specifications, generate responses to Office actions, write and respond to briefs, and even draft patent claims. There is no prohibition against using these computer tools in drafting documents for submission to the USPTO and there is no general obligation to disclose to the USPTO the use of such tools. However, there are USPTO policies and duties affecting the use of these computer tools.

Submissions and Correspondence with the USPTO

All papers submitted to the USPTO must be reviewed by the parties presenting the paper. Those parties are responsible for the contents and simply relying on the accuracy of an AI tool is not a reasonable inquiry. If an AI tool is used in drafting or editing a document, the party must still review its contents and ensure the paper is in accordance with the certifications being made. Because generative AI systems are known to omit, misstate, or even “hallucinate” or “confabulate” information, the party presenting the paper must ensure that all statements in the paper are true to its own knowledge and made based on information that is believed to be true. If an AI system is used to draft a portion of a response to an examiner Office action, the party should review the response, including checking the accuracy of the citations and ensuring the arguments are legally warranted.

Upon review of the document drafted with the assistance of an AI tool, any errors or omissions in the document must be corrected. Filing a paper with the USPTO that includes erroneous facts, arguments, or authorities or with known material omissions in not accordance with the duty of candor and good faith.

Patent Examples

If the use of an AI tool is material to patentability, the use of the AI tool must be disclosed to the USPTO. For example, material information could include evidence that a named inventor did not significantly contribute to the invention because the person’s purported contributions were made by an AI system. This could occur where an AI system assists in the drafting of the patent application and introduces alternative embodiments that the inventor(s) did not conceive, and the applicant seeks to patent. If there is a question as to whether there was at least one named inventor who significantly contributed to a claimed invention developed with the assistance of AI, information regarding the interaction with the AI system could be material and, if so, should be submitted to the USPTO.

In situations where the specification and/or drawings of the patent application are drafted using AI tools, practitioners must verify the technical accuracy of the documents. Also, when AI tools are used to produce or draft prophetic examples, appropriate care should be taken to assist the readers in differentiating these examples from actual working examples.

When AI systems make contributions to drafting portions of the specification and/or claims (e.g., introducing alternate embodiments not contemplated by the inventor), it is appropriate to assess whether the contributions made by natural persons rise to the level of inventorship, in accordance with the law and recent USPTO guidance. Though AI may be used to identify evidence or even draft affidavits, petitions, or responses to Office actions, practitioners are required to verify the accuracy of factual assertions, both technical and legal, and ensure that all documents, including those prepared with the assistance of AI, do not introduce inaccurate statements and evidence into the record or omit information that is material to patentability.

AI may be used to automatically populate the Information Disclosure Statement (IDS) form with citations for submission to the USPTO and may be used to collect prior art references in the first place. The unchecked use of AI poses the danger of increasing the number and size of IDS submissions to the USPTO. A natural person is obligated to sign the IDS. By signing, that person is certifying that they have performed a reasonable inquiry—including not just reviewing the IDS form but reviewing each piece of prior art listed on the form.

Trademark Examples

Trademark and TTAB submissions generated or assisted by AI must be carefully reviewed prior to filing to ensure that the facts and statements provided are true and have appropriate evidentiary support. This includes any information or evidence provided in trademark applications, registration maintenance filings, and TTAB proceedings, as well as legal arguments and citations made in response to refusals and requirements in Office actions or in briefs before the TTAB, whether in appeals or trial cases. Care should be taken to avoid submitting any AI-generated specimens, which do not show actual use of the trademark in commerce, or any other evidence created by AI that does not actually exist in the marketplace.

Filing Documents with the USPTO

Beyond assisting with the preparation of documents, AI tools could be used to assist or automate the mechanical aspects of filing documents with the USPTO. For example, these tools could potentially autocomplete USPTO forms, access information on USPTO websites, and upload documents and other information to USPTO servers. Persons using such tools should ensure that USPTO rules and policies are not violated. Nearly all forms of correspondence filed with the USPTO must bear the signature of a “person.” It would not be acceptable for the correspondence to have the signature of an AI tool or other non-natural person. The signer of the document cannot delegate this act to another person or entity and it is not compliant with the rules to have the AI tool apply the signature of a person without being personally entered by that person.

Accessing USPTO IT Systems

AI tools have the capabilities to access and interact with USPTO IT systems. However, practitioners must pay attention to ensure the use of these tools does not run afoul of federal and state law, and USPTO regulations and policies. Only “users” are permitted to file documents or access authorized information and AI systems or tools are not considered a “user” and cannot file and/or access documents via the USPTO’s electronic filing systems. Practitioners using a computer tool, including an AI system, to assist in submitting documentation to the USPTO must ensure that the computer tool does not exceed authorized access.

Using computer tools, including AI systems, to data mine USPTO information in a manner that generates unusually high numbers of database accesses violates the Terms of Use for USPTO Websites. Users using tools in this way will be denied access to USPTO servers without notice and could be subject to applicable state criminal and civil laws. Users should instead use the USPTO’s bulk data products for permitted and appropriate data mining efforts.

Confidentiality and National Security Considerations

The use of AI can result in the inadvertent disclosure of client-sensitive or confidential information, including highly sensitive technical information. This can happen when aspects of an invention are input into AI systems to perform prior art searches or generate drafts of patent applications or responses to Office actions. AI systems may retain the information that is entered by users. This information can be used in a variety of ways by the owner of the AI system including using the data to further train its AI models or providing the data to third parties in breach of practitioners’ confidentiality obligations to their clients. Practitioners must be vigilant to ensure that the confidentiality of client data is maintained.

Moreover, practitioners must be mindful of the possibility that AI tools may utilize servers located outside the United States, raising the likelihood that any data entered into such tools may be exported outside of the United States, potentially in violation of existing export administration and national security regulations or secrecy orders. Even if the servers are located within the United States, certain activities related to the use of AI systems hosted by these servers by non-U.S. persons may be deemed an export subject to these regulations. AI system developers or maintainers may suffer data breaches, further subjecting user data to disclosure risks. Therefore, before using AI tools, practitioners must understand an AI tool’s terms of use, privacy policies, and cybersecurity practices.

Fraud and Intentional Misconduct

The USPTO does not tolerate fraud or intentional misconduct in any manner in a proceeding before the Office or in connection with accessing USPTO IT systems. As explained above, all individuals associated with a proceeding before the USPTO have a duty of candor and good faith. The duty extends not only to the personal actions of these individuals, but also to the actions these individuals take with any automated tools, including AI tools.

The Guidelines issued by the USPTO are not exhaustive, but provide a reminder to practitioners to familiarize themselves with the impacts of new technology on their practice and procedures. Coupled with its earlier guidelines on AI-assisted inventions, the USPTO is addressing the increasingly widespread adoption of AI into the IP industry.

The Need for Partnering with Experienced Counsel

Leveraging AI tools within the framework of USPTO regulations requires precision and insight. Buchanan's team of intellectual property attorneys is ready to assist you in navigating this process to protect your assets and gain a competitive edge in the market.