On April 10, 2024, the United States Patent and Trade Office (USPTO) released guidance on the use of artificial intelligence (AI) tools before the USPTO.1 This guidance recognizes that AI tools come with potential benefits, such as improvements in cost, quality, and efficiency, as well as potential risks, such as inaccuracy or inadvertent disclosure of sensitive information. It focuses on how rules and policies are applied in the context of AI tools.2
Main points
The main points of this guidance are:
- The USPTO has determined that existing rules are sufficient to protect against current risks from the use of AI tools.
- The use of AI tools to assist in the preparation of documents submitted to the USPTO is not prohibited.
- Unless specifically requested by the USPTO, there is no general or substantive obligation to disclose when AI tools are used during USPTO practice or in the invention creation process. However, such disclosure may be required in certain cases.
- This guidance provides suggestions with various examples of the level of human involvement and oversight required to comply with existing rules and policies.
Guidance overview
This guidance includes a section reviewing existing regulations that may be relevant to the use of AI tools when practicing before the USPTO. Specifically, duties of honesty and integrity, signature requirements and corresponding certificates, confidentiality of information, foreign filing licenses and export controls. , USPTO Electronic Systems Policy, and Obligations to Customers.
The guidance then moves on to the application of existing rules to the use of AI in the USPTO, starting with the use of AI in document preparation. The guidance acknowledges that AI tools may be used to draft patent specifications and claims, responses to office actions, briefs, affidavits, and pleadings. Experts must review papers submitted to the USPTO to ensure that the claims are legally sound. Relying on the accuracy of AI tools is not enough.
Additionally, because the use of AI-based tools is important to patentability, disclosures including the inputs and outputs of the AI system may be required. For example, if you use an AI-based tool to create a statement or claim, the AI-based tool may suggest one or more alternative embodiments. In such situations, it is important to consider whether one or more alternative embodiments proposed by the AI-based tool are eligible for patent protection, i.e., whether a human could claim a patent developed with the aid of AI. The question arises as to whether they have made a significant contribution to the invention of It is patentable subject matter.
This guidance also states that using AI tools to automatically fill out Information Disclosure Statement (IDS) forms can increase the number or size of IDS submissions, resulting in a large number of cumulative, unrelated submissions to the USPTO. It warns that there is a risk of overloading. This guidance states that the content of the IDS must be reviewed to remove apparently irrelevant and irrelevant cumulative information, and that submitting an IDS without reviewing the content is a violation of 37 CFR 11.18(b). states that it is possible.
The guidance also provides information on using AI tools to interact with USPTO systems, including submitting documents to the USPTO and accessing USPTO databases. For example, the guidance explains that AI-based tools cannot have user accounts to sign returns or access USPTO systems; these operations must be performed by a human.
This guidance is intended to help ensure that AI tools maintain the confidentiality of customer data and consider national security, export control, and foreign filing licensing issues (for example, if the AI tool uses servers located outside the United States). We conclude by recommending caution when disclosing information to. We remind you that AI tools should not be used for unauthorized access, use, or disclosure of data from USPTO systems.
conclusion
The AI Guidance, effective April 11, 2024, provides helpful information regarding the use of AI-based tools in USPTO practice. Practitioners should carefully review the guidance and ensure that their use of AI tools complies with their USPTO rules and procedures.
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