USPTO Issues Guidance on Using Artificial Intelligence Tools | WilmerHale

On April 10, 2024, the United States Patent and Trade Office (USPTO) announced guidance regarding the use of artificial intelligence (AI) tools before the USPTO.¹ The guidance recognizes that AI tools come with potential benefits—improved costs, quality, and efficiency—and potential risks—such as inaccuracy and inadvertent disclosure of confidential information—and focuses on how existing rules and policies apply in the context of AI tools.²

Primary Takeaways

The primary takeaways from the guidance include the following, with further details below:

1. The USPTO has determined that existing rules are sufficient to protect against the current risks of using AI tools.
2. Using AI tools to assist with drafting documents for submission to the USPTO is not prohibited.
3. There is no general or per se obligation to disclose when an AI tool is used when practicing before the USPTO or in the invention creation process, unless specifically requested by the USPTO. However, there may be specific cases where such disclosure is required.
4. The guidance provides suggestions in various examples regarding the level of human involvement or oversight needed to comply with existing rules and policies.

Overview of the Guidance

The guidance includes a section reviewing existing rules that may be relevant to the use of AI tools when practicing before the USPTO, specifically: the duty of candor and good faith, signature requirements and corresponding certifications, confidentiality of information, foreign filing licenses and export regulations, USPTO electronic systems policies, and duties owed to clients.

The guidance then turns to the application of those existing rules to the use of AI before the USPTO, starting with its use in document drafting. The guidance recognizes that AI tools may be used to draft patent specifications or claims, Office Action responses, briefs, affidavits, or petitions. A practitioner must review any paper submitted to the USPTO for accuracy and to ensure the arguments are legally warranted. Simply relying on the accuracy of an AI tool is not sufficient.

In addition, there are circumstances where the use of an AI-based tool is material to patentability such that disclosure, including potentially the inputs/outputs of the AI system, is required. For example, if an AI-based tool is used to draft a specification or claim, the AI-based tool may propose one or more alternative embodiments. In such circumstance, a question arises as to whether the one or more alternative embodiments proposed by the AI-based tool are entitled to patent protection, i.e., whether a human “significantly contributed to a claimed invention developed with the assistance of AI” such that it is patentable subject matter.

The guidance also cautions the use of AI tools to automatically populate Information Disclosure Statement (IDS) forms may increase the number or size of IDS submissions, risking burdening the USPTO with large numbers of cumulative and irrelevant submissions. The guidance states that IDS contents should be reviewed to remove clearly irrelevant and marginally pertinent cumulative information, and that submitting an IDS without reviewing its contents may be a violation of 37 CFR 11.18(b).

The guidance also provides information regarding the use of AI tools to interact with USPTO systems, including filing documents with the USPTO and accessing USPTO databases. For example, the guidance explains that AI-based tools cannot sign filings or have a user account for accessing USPTO systems—these actions must be performed by a person.

The guidance ends by recommending vigilance when disclosing information to AI tools to maintain confidentiality of client data, and to consider national security, export control, and foreign filing license issues (e.g., if AI tools use servers located outside the United States), and with a reminder that AI tools should not be used for the 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 for USPTO practice. Practitioners should carefully review the guidance and confirm that their use of AI tools complies with the USPTO’s rules and procedures.

Footnotes