A case study on why we can’t rely on AI just yet

Generative Artificial Intelligence (GAI) promises to improve information gathering and reduce costs in countless economic processes. Since patent law is inherently about recording and accessing information, tools like ChatGPT are excellent candidates to make the work of patent professionals easier.

As of today, the prompts provided to these tools do not guarantee confidentiality and data protection, unless an entity creates its own sandbox with a customized implementation that protects the data, therefore using GAI tools with sensitive information is not recommended. can’t be trusted.

For patent prosecution, asking procedural questions seems like a good use of the GAI. Because who doesn’t gleefully celebrate that his client’s information wasn’t in jeopardy and good old he was able to bury MPEP?

I recently ran into a rare scenario and decided to ask ChatGPT and Bard for help. My problem was the name of the assignee was incorrect as there was no “Inc.” in the company name. lastly.

I asked the question, “How do you correct an incorrect company name for an assignment on the USPTO?”

ChatGPT replied:

If you need to correct an incorrect company name assigned by the USPTO, please follow these steps:

1. Identify the types of assignments that need fixing. Is it a trademark assignment, patent assignment, or another type of assignment?
2. Check the USPTO website to see if there are specific instructions on how to amend the assignment. You can also contact the USPTO’s Assignment Records Division for assistance.
3. Write a letter or form that clearly identifies the issue that needs fixing and explains the reason for the fix.
4. Include supporting documentation needed to support the fix.
5. Submit the letter or form and supporting documentation to the USPTO’s Assignment Recording Branch. Corrections can be submitted electronically through the Electronic Patent Assignment System (EPAS) or by mail.

It is important to note that there may be fees associated with correcting assignments. So make sure he checks the USPTO’s fee schedule. Additionally, if you have any questions or concerns about the assignment amendment process, be sure to consult with an attorney or legal professional.

I thought this was no good. Answers that include “Check the USPTO website to see if there are specific instructions” do not help me overcome my desire to circumvent the MPEP.

I asked Bird and this was the answer:

To correct an incorrect company name on a USPTO transfer, you must submit a corrected cover sheet to the Transfer Services Department. The revised cover sheet should contain the following information:

• • Correct company name
  • wrong company name
  • Application number or patent number affected by the error
  • a statement explaining the error
  • Signature of the person authorized to correct the error

You must also pay the necessary fees for each application or patent amended. The fee is currently $200 per application or patent.

You can submit your corrected cover sheet online or by mail. If you are filing online, you will need to create an account with the USPTO and pay the fees using a credit card. If submitting by mail, the revised cover sheet, required fees, and a copy of the originally recorded paper must be sent to the following address:

United States Patent and Trademark Office

Assignment Service Division

PO Box 1450

Alexandria, Virginia 22313-1450

Once the revised cover sheet is submitted, the USPTO will update its records to reflect the correct company name.

Here are the steps to correct an incorrect company name assigned by the USPTO:

1. 1. Gather the required information. This includes the correct company name, the incorrect company name, the application number or patent number affected by the error, a statement explaining the error, and the signature of the person authorized to correct the error.
   2. Pay the required fees. The fee is currently $200 per application or patent.
   3. File the modified cover sheet. You can submit your corrected cover sheet online or by mail.
   4. Wait for the USPTO to update its records. The USPTO will update its records to reflect the correct company name when a corrected cover sheet is submitted.

For more information, please visit the USPTO website. https://www.uspto.gov/patents-getting-started/correcting-errors

I got excited when I saw this answer. Because not only did it seem to hit the mark, but the answer indicated that there was no need to go back to the inventor to get a signature for the fix. It also included a link to a page where you could validate your answer.

Unfortunately my initial joy quickly soured. First, the link wasn’t valid and I got the dreaded 404 error. Second, that information was for correcting the cover, not an error in the assignment itself. Close but no cigars!

I could have narrowed down the answers by adding more specific prompts, but now I don’t trust any of the answers, so I went back to my old method. I asked my colleagues, looked up MPEP, and called the USPTO’s Transfer Division. Unfortunately, I have to track down the inventor for a new signature on a revised assignment.

The lesson here is that it is too early to rely solely on GAI tools, MPEP is taking hold and all information provided by the tools should be verified. Fortunately, this means job security for us patent professionals. How long, you will soon find out.

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Copyright: Von Ramai