USPTO Guidelines on Use of Artificial Intelligence (AI) is an Embrace of AI – When Clearly and Reportedly Supervised by Patent Practitioners
Back in October 30, 2023, President Biden issued an Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (‘‘Executive Order’’).[1] The 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’’ (emphasis added), while promoting responsible uses of AI.[2] The USPTO responded by providing its Guidance on Use of Artificial Intelligence-Based Tools in Practice before the United States Patent and Trademark Office, which clarifies the USPTO’s position on the use of AI in Patent and Trademark Matters (“USPTO Guidance”).[3]
The key message from the USPTO is a cautious embrace of AI that is contingent upon supervision of all drafts and documents by a patent practitioner, as evidenced by the signature of the patent practitioner in virtually all documents submitted to the USPTO.
The USPTO Guidance clearly acknowledges that “these [AI] tools have the potential to lower the barriers and costs of practicing before the Office as well as helping law practitioners offer services to their clients with improved quality and efficiency.” With regards to AI risks, the USPTO Guidance clarifies that “the risk that incomplete or inaccurate outputs generated by AI, which, when not thoroughly verified by parties and practitioners, can also result in critical misstatements and omissions, is mitigated by the signature requirement of a practitioner.” This is because “[g]enerally, all patent correspondence filed in the USPTO must bear a person’s signature.”
In practice, the USPTO Guidelines accept use of AI in all stages of the patent drafting process that do not require human analysis. The USPTO Guidelines then place the burden of legal analysis and review squarely to the Patent Practitioners. For example, 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.” The USPTO accepts the signature of the practitioner in the submission as evidence that a review has been properly conducted.
A few more practical examples: in situations where an AI tool is used to draft patent claims, the practitioner is under a duty to modify those claims as needed to present them in patentable form before submitting them to the USPTO. If an AI system is used to draft patent claims that are submitted for examination, but an individual listed in 37 CFR 1.56(c) has knowledge that one or more of the claims did not have a significant contribution by a human inventor, that information must be disclosed to the USPTO. AI cannot be an inventor. In situations where the specification and/or drawings of the patent application are drafted using AI tools, practitioners need to take extra care to verify the technical accuracy of the documents and compliance with 35 U.S.C. §112. 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.
The strongest warnings in the Guidelines are the USPTO’s emphasis on potential export issues and confidentiality issues posed by AI assistance in drafting: what happens when information is exported during its AI analysis? The USPTO strongly warns that ‘‘[a]pplicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.’’ ‘‘The BIS has promulgated the Export Administration Regulations (EAR) governing exports of dual-use commodities, software, and technology, including technical data, which are codified at 15 CFR parts 730 through 774.’’ Release of controlled technology to a foreign person may be deemed an export. 15 CFR 734.13(b). In case you are wondering, this risk is not mitigated by a foreign filing license. According to the USPTO; “[a] foreign filing license does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.’’
The message is a clear embrace of AI in patent preparation. Potential risks are mitigated by the mandatory review of filings by the patent practitioner. Practitioners should be cognizant to protect the confidentiality of the materials. In particular, practitioners should be cognizant not to export subject matter abroad for the preparation of patent applications.
This client alert was prepared by Naira Simmons, Co-Chair of the Pierson Ferdinand Intellectual Property Department.
This publication and/or any linked publications herein do not constitute legal, accounting, or other professional advice or opinions on specific facts or matters and, accordingly, the author(s) and PierFerd assume no liability whatsoever in connection with its use. Pursuant to applicable rules of professional conduct, this publication may constitute Attorney Advertising. © 2024 Pierson Ferdinand LLP.
[1] Executive Order 14110, 88 FR 75191 (November 1, 2023).
[2] Id at 75193.
[3] Federal Register /Vol. 89, No. 71 /Thursday, April 11, 2024 /Notices
