Artificial intelligence (AI) is becoming ubiquitous, with industries across the board adopting AI tools to streamline operations. But can legal professionals leverage AI in their daily work? Specifically, can patent attorneys use AI tools for filing and prosecuting patent applications? The USPTO has provided guidance on this topic.
On April 11, 2024, USPTO issued "Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office" (April 2024 Guidance). In short, the Guidance states that the use of AI-based tools by patent attorneys, agents, and other parties is not prohibited.
The Guidance notes that there is no change to the existing duties owed to the USPTO for applicants and practitioners, but discusses risks associated with using AI for drafting documents, filing documents, and interacting with USPTO systems, provides suggestions for mitigating those risks, and addresses implications for confidentiality and national security.
Document Drafting
The Guidance notes that, when drafting documents for submitting to the USPTO, practitioners should check the accuracy of any citations and make sure that all arguments are legally and technically sound. When using AI tools to draft patent applications, practitioners should take extra care to verify technical accuracy, compliance with 35 USC 112(a) and ensure accurate description of prophetic examples and working examples. Practitioners should also ensure that the information disclosure statement (IDS) prepared by an AI tool is accurate and complete.
Practitioners are reminded of 37 CFR 11.18(b) governing signature and certification applies to parties signing and/or presenting papers to the USPTO. Under 37 CFR 11.18(b)(1) governing certification, when a patent attorney, agent, or party files a document with the USPTO, they are certifying that the statements made in the submission are accurate, truthful, and made with a reasonable basis in fact and law. Under 37 CFR 11.18(b)(2) governs duty of reasonable inquiry, patent attorneys, agents, and other parties submitting documents to the USPTO must ensure that, after conducting a reasonable investigation under the circumstances, the contentions and representations in the submission are well-grounded in fact and law.
Filings with the USPTO
An AI system would not be considered a "user" for filing or accessing documents via USPTO's electronic filing systems. The papers and filings submitted to the USPTO must be signed by the person submitting the paper. An AI tool cannot sign for a natural person. Practitioners may not sponsor AI tools as a support staff individual to obtain an account from USPTO.gov. Therefore, ensure that a natural person (that is, a patent attorney/agent or their human assistant) is signing and filing the patent documents to the USPTO.
Confidentiality and National Security
Use of AI systems may result in inadvertent disclosure of client-sensitive or confidential information to third parties, resulting in breach of practitioners' confidentiality obligations to clients. This may occur when elements of an invention are entered into AI systems to conduct prior art searches, produce drafts of patent applications, or prepare responses to Office Actions. The AI system may store the information entered by users, and the AI system’s owner could use this data in various ways, such as enhancing the AI models through further training or sharing the data with third parties.
Additionally, AI tools might operate on servers located outside US, increasing the risk that any data input into these tools could be exported abroad, potentially violating existing export administration and national security regulations or secrecy orders. Even if the servers are based in the U.S., certain actions taken by non-U.S. persons using AI systems on these servers may still be considered exports subject to these regulations. Moreover, there is also risk of data breach in the AI systems, resulting in a leak of your confidential information to third parties. Thus, make sure your patent attorney/agent understands the terms of use, privacy policies, and cybersecurity practices of the AI-based tool they intend to use.
Duty of Candor and Good Faith
All individuals associated with a patent prosecution or other proceedings before the USPTO have a duty of candor and good faith. The Guidance provides that practitioners must ensure their use of AI does not violate their duty to have the legal, scientific, and technical knowlege to represent their clients. Practitioners must perform their own reasonable inquiry when signing correspondence with the USPTO; relying on AI does not constitute a reasonable inquiry.
There is no obligation to inform the USPTO of use of AI, but because of the duty of disclosure under 37 CFR § 1.56, any use of AI that is material to patentability should be disclosed to the USPTO. When AI is employed to draft claims for a patent application, practitioners are required to inform the USPTO if any claimed subject matter does not have significant contributions from a human inventor. This situation may also occur when an AI system aids in drafting the detailed description of a patent application and presents alternative embodiments that are included in the claims but do not have meaningful human input. If the claim lacks significant human contribution, there would be no patent protection for the claimed subject matter. Applicant who is or considers using AI tools for R&D should establish internal documentation processes to ensure that they comply with their duty to disclosure to the USPTO which would also help to defend future invalidation attempts regarding potential improper inventorship for AI inventions.
In summary, while the Guidance does not prohibit patent attorneys, agents, or applicants from using AI tools for patent filing and prosecution, extra care should be taken when utilizing these technologies to ensure compliance with existing obligations to the USPTO and maintenance of client confidentiality. Practitioners must verify the accuracy of any AI-generated content for submitting to the USPTO and remain vigilant about the potential risks associated with data retention and export regulations.
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