On April 11, 2024, the United States Patent and Trademark Office (USPTO or Office) announced new regulations regarding the use of artificial intelligence (AI)-based tools related to the preparation and prosecution of patent and trademark applications and other applications to the USPTO. Guidance has been published. This guidance addresses how the use of AI interacts with a patent and trademark practitioner's duties and obligations to his USPTO in various situations.
In particular, the USPTO has determined that existing rules and procedures are sufficient to address the potential risks associated with the use of AI-based tools, so this guidance may issue new rules or amend existing rules. I haven't done that. However, this guidance provides much-needed guidance to inventors, practitioners, and other stakeholders on interpreting existing rules and procedures in the context of AI to ensure compliance with Patent Office standards and expectations. We will provide you with instructions.
background
This guidance follows the Executive Order on the Safe, Secure, and Dependable Development and Use of Artificial Intelligence (AI EO), issued by President Biden on October 30, 2023, which requires inventors and directed the Bureau to issue guidance addressing both the use of Additional considerations for patent examiners and applicants at the intersection of AI (including generative AI) and AI and IP in the invention process.
The USPTO issued previous guidance on the use of AI in the invention process on February 13, 2024. See our March 25, 2024 client alert, “New Developments Help Clarify the Intersection of Patent Law and Artificial Intelligence.”
This updated guidance to the Patent Trial and Appeal Board (PTAB) and the Trademark Trial and Appeal Board (TTAB) by USPTO Director Catherine Vidal emphasizes the importance of protecting the integrity of the USPTO's existing rules. This is also in accordance with the memorandum dated February 6th. Regulation of the use of AI by practitioners and others before the PTAB and TTAB.
The updated guidance notes that while the recent proliferation of AI-based tools has been beneficial to legal professionals and others practicing at the USPTO, the risks posed by overreliance on AI have made it difficult for practitioners to comply with USPTO standards. and the ability to conform to expectations is underlined as being threatened. As examples of risks, the guidance includes output that contains legal briefs that contain material misstatements or omissions, or fictitious quotations or citations, and the risks posed by sharing sensitive or confidential customer information with an AI platform. is emphasized.
Clarification of existing USPTO rules and procedures
The guidance first clarifies some of the existing rules that create obligations regarding the use of AI in connection with patent applications.
- Duty of honesty and candor in government offices.1 This guidance reminds readers that the duty of honesty and candor applies to all interactions with the Office, including the filing of petitions and responses to Office actions. This includes a duty to “disclose to the office all information known to the individual.” Becomes patentable material. ”
- Signature requirements and corresponding certifications.2 The guidance states that the USPTO signature requirements and corresponding certifications must be signed by the practitioner themselves, and that there is a duty of reasonable investigation.3 The signatories certify that the paper “has not been submitted for any improper purpose, that the legal claims are justified by law, that the allegations and other factual assertions are supported by evidence; and that the denial of factual allegations is supported by the evidence.''Four
- Confidentiality rules and additional obligations. This guidance describes confidentiality rules, including the following requirements:[a] “A physician shall not disclose information regarding a client's representation unless the client has given informed consent” or the disclosure falls under other exceptions.Five
Applying existing rules to AI
The guidance then explains how the aforementioned rules specifically apply in the context of practitioners' use of AI, including document preparation, filing, and use of USPTO information technology systems. We also discuss confidentiality and national security considerations, as well as fraud and intentional misconduct considerations.
The key points are:
- making document. For practitioners who plan to use AI in connection with document production, the guidance highlights: [AI] “Computer Tools in Drafting'' or “General Obligation to Disclose the Use of Such Tools to the USPTO,'' requires practitioners to keep in mind certain steps when using AI in connection with the drafting of documents. need to do it.
- USPTO filings and communications. The party submitting the paper must have reviewed and verified the paper and its content. Simply “relying on the accuracy of the AI tool” is not sufficient “reasonable inquiry” to satisfy the signature requirement under the CFR. The guidance specifically highlights concerns about AI that may omit information, misrepresent, or cause hallucinations.
- Additional patent examples. The duty of candor and honesty requires disclosure of certain facts relevant to patentability, such as significant contributions by human inventors. Therefore, the guidance states that practitioners should always validate specifications created with the assistance of AI to ensure compliance with the specification provisions of 35 USC 112. Additionally, the guidance states that practitioners should verify the accuracy of evidentiary submissions made with the assistance of AI. A.I.
- Trademark-specific guidance. This guidance specifically addresses certain unique considerations regarding submissions to the TTAB. In particular, the guidance states that any submissions made with the assistance of an AI system before being submitted to the TTAB must be reviewed for accuracy and evidentiary support. For example, the guidance states that practitioners should be careful to “avoid submitting AI-generated samples that do not indicate actual use of the trademark in commerce, or other AI-generated evidence that does not actually exist on the market. “There is a need,” it says. ”
- filing documents. This guidance makes clear that submissions must be signed by an actual human and not an AI tool. Additionally, the guidance states that a practitioner cannot use her AI tools to retrieve her USPTO.gov account and file applications on her behalf.
- Access to USPTO IT systems. This guidance clarifies that AI systems are not considered authorized “users” of USPTO IT systems for purposes of submitting documents or accessing information. Additionally, the guidance states that using AI systems to “data mine” information from the USPTO's electronic systems in an unauthorized manner may subject users to criminal and civil penalties. . The guidance recommends that if a user wishes to engage in “permitted and appropriate data mining activities” he instead uses the USPTO's own bulk his data products.
- Confidentiality and national security. The guidance makes clear that practitioners who rely on AI tools developed by third parties must take care to ensure that the confidentiality of client data is maintained. Additionally, it warns that the disclosure of customer data through the use of AI tools may involve national security, export control, and foreign filing licensing issues, especially if the AI tools use servers hosted in foreign countries. ing.
- Fraud and intentional misconduct. The guidance makes clear that a breach of the duty of good faith by an AI may amount to fraud or intentional misconduct on the part of the physician using the AI on their behalf. Additionally, the guidance cites the USPTO website terms of use to state that AI tools that cause “unauthorized access, action, use, modification, disclosure, or transfer to or from the USPTO of data contained on the website” It talks about usage. “Web System” is a violation of the Computer Fraud and Abuse Act. However, it is important to note that neither the guidance nor the Terms of Use detail what actions, with or without AI, constitute a violation.
summary
In this guidance, the USPTO acknowledges that the recent proliferation of AI-based tools may be beneficial to legal professionals and others practicing before the USPTO. However, there are risks posed by over-reliance on AI, such as output containing material misstatements or omissions, or legal briefs containing fictitious quotes or citations, and the risks posed by over-reliance on AI, such as output containing material misstatements or omissions, or legal briefs containing fictitious quotations or citations, and the risks posed by over-reliance on AI. It also highlights the risks that may arise from sharing with. She emphasized the importance of ensuring practitioners using AI comply with her Office's standards and expectations. Practitioners should always carefully review works created with the assistance of AI to ensure that their use complies with existing duties and obligations to public authorities.
Note that this guidance does not issue new rules or regulations specifically tailored to the AI landscape, consistent with the approach taken by the Copyright Office. See the March 6, 2023 client alert, “Copyright Office issues guidance on AI-generated works, emphasizes human copyright requirements.”
The USPTO says it will continue to engage with the public on this topic as the use of AI advances and evolves. Therefore, companies and practitioners looking to leverage AI-based tools should closely monitor both developments in AI technology and USPTO statements to ensure compliance.
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1 37 CFR 11.202.
2 37 CFR 11.18(a).
3 37 CFR 11.18(b)(2).
4 MPEP 2002.02.
5 37 CFR 11.106(a).
This memorandum is provided by Skadden, Arps, Slate, Meagher & Flom LLP and its affiliates for educational and informational purposes only and is not intended to be, and should not be construed as, legal advice. there is no. This Memorandum is considered advertising under applicable state law.
