The United States Patent and Trademark Office (USPTO) has published guidance on the use of artificial intelligence-based tools in patent practice to inform practitioners about key issues when using artificial intelligence (AI) in cases before the Patent Office.1 The Patent Office recognizes that AI may be used in the preparation and review of patent applications and filings, including documents submitted to the Patent Trial and Appeal Board.
The Guidance informs individuals, including registered practitioners involved in proceedings before the Patent Office, of the applicable rules and risks associated with the use of AI systems and provides suggestions for mitigating those risks. Specifically, Section III of the Guidance explains how existing rules and policies apply with respect to the use of AI tools in matters before the Patent Office.
Specifically, Section III(A) describes the use of AI systems in preparing documents for filing with the Office; Section III(B) describes the filing of documents with the assistance of AI tools; Section III(C) describes the Office's information technology (IT) systems and the appropriate use of AI tools that communicate with those systems; and finally, Section III(D) addresses confidentiality and national security concerns when using AI systems.
Use of computer tools for document preparation
The Guidelines state that there is no prohibition on the use of AI computer tools in preparing documents for filing with the Patent Office, nor is there a requirement to disclose the use of AI tools. Applicants, registrants, practitioners, litigants and other filers should be mindful of their associated obligations to the Patent Office and their clients when using these computer tools.
All communications regarding patents must be signed. The signature requirement includes documents drafted entirely by or with the assistance of AI tools. Submission of the document constitutes certification under 37 CFR 11.18(b) that all statements are true to the best of the party's knowledge and that the party has performed a reasonable investigation under the circumstances. Therefore, documents submitted to the Patent Office must be reviewed by the party submitting the document. Therefore, documents must be reviewed by a signatory even if an AI tool is used to draft or edit the document.
The guidance reminds practitioners and applicants of their disclosure obligations. In particular, if the use of AI tools has a material effect on patentability as defined in 37 CFR 1.56(b), the guidance indicates that such use of AI tools must be disclosed. For example, material information could include evidence that an inventor did not significantly contribute to the invention because that person's alleged contributions were made by an AI system. Similarly, inventorship may be different if an AI system is used to draft or amend claims. Thus, practitioners should thoroughly ensure that the correct inventors are listed in patent applications.
Additionally, AI can be used, for example, to automatically populate citations on the Patent Office's PTO/SB/08 Information Disclosure Statement (IDS) form and to collect prior art documents. The guidance indicates that submitting an IDS without reviewing its contents may violate 37 CFR 11.18(b).
Submission of documents
AI tools can assist with filing documents. For example, AI tools can auto-fill forms, access information on websites, and upload documents and other information to the USPTO system. The guidance indicates that AI tools are not permitted to insert a human signature pursuant to 37 CFR 1.4(d). A signer of a document cannot assign the act of signing to another person. Another issue is using an AI tool to file a document with the USPTO. To file a document, a user needs a USPTO.gov account. USPTO.gov accounts are limited to natural persons and cannot be obtained by non-natural persons. Therefore, an AI system may not be able to obtain a USPTO.gov account.
Access to USPTO IT systems
Care must be taken to ensure that the use of AI tools does not violate federal or state laws or USPTO regulations. One important policy to note is the requirement that users must not submit documents or access information that they are not authorized to access. When using AI tools to assist with filing documents with the USPTO, it is the user's responsibility to ensure that the AI tool does not exceed the permitted access limits, for example, by submitting or accessing documents that it is not authorized to access. Violating permitted limits may result in the cancellation of a user's USPTO.gov account, in addition to criminal, civil, and administrative actions and penalties.
Confidentiality concerns
The Guidelines warn that the use of AI may result in the unintentional disclosure of confidential information, including technical information, to third parties. The Guidelines warn that some AI tools may retain confidential information input by applicants or practitioners. In addition, AI tools may retain confidential information to further train AI models or provide confidential data to third parties, violating practitioners' confidentiality obligations under 37 CFR 11.106. Finally, confidential information may be used to train the AI and may be filtered into the output that the AI system provides to others.
Development of AI tools by third parties, storing client data in third-party storage, or purchasing off-the-shelf AI tools may also implicate the confidentiality of client data. Disclosure of AI may also implicate national security, export control, and foreign filing license regulations. For example, AI tools may utilize servers located outside the United States, and data input into such tools may be exported outside the United States, violating existing export control and national security regulations or secrecy orders. Therefore, it is important that practitioners understand the AI tool's terms of use, privacy policy, and cybersecurity practices before using it.
Fraud and intentional misconduct
The guidelines indicate that using AI tools on the USPTO website to unauthorizedly access, manipulate, use, modify, or disclose USPTO data is a violation of the Computer Fraud and Abuse Act. The USPTO monitors network traffic to detect such activity, and violators are subject to criminal, civil, and/or administrative actions and penalties.
Practical suggestions
While this guidance does not have the force of law and does not constitute substantive rulemaking, practitioners and applicants should be aware of it with respect to the practical use of AI at the USPTO. Although not directly discussed in the guidance, the discussion of potential disclosures of confidential client information by AI tools is a warning about potential invalidating disclosures regarding prior art and/or obviousness (inventive step) in the United States and foreign countries.
The confidentiality policy of the AI tool should be reviewed to determine whether the information provided and the resulting deliverables (e.g., patent applications) can be used as input for AI training of other patent applications. Additionally, practitioners and applicants should scrutinize the operation of the AI tool to ensure that, prior to filing, the AI-based tool has appropriate safeguards in place to avoid inadvertent disclosure of inventions that could invalidate the invention or reveal important trade secret information.
Additionally, as stated in the Guidance, relying on AI tools to determine which prior art is material to patentability is not permitted; it must be disclosed to the Patent Office via an IDS. As stated in the Guidance, only registered practitioners and applicants may make these determinations, and only those persons may sign documents submitted to the USPTO. In accordance with 37 CFR 1.4(d), AI tools are not permitted to insert a person's signature, i.e., sign documents.
As the actual use of AI at the USPTO continues to evolve, practitioners and applicants should keep an eye on AI-focused developments by the USPTO and the courts.
Ira Donner is a partner in Manatt's intellectual property practice. Patent Filing: Law, Practice, and Procedure11th edition, and Patent construction and dismantling2nd Edition, both published by Bloomberg Law.
1Guidance on the Practical Use of Artificial Intelligence-Based Tools at the U.S. Patent and Trademark Office, 89 FR 25609 (April 11, 2024).
