Artificial Intelligence versus the MPEP: A Case Study in Why We Can’t Yet Rely on AI

Generative Artificial Intelligence (GAI) promises to improve information gathering and reduce costs in a myriad of economic processes. Since patent law is essentially about recording and accessing information, tools like ChatGPT are great candidates to ease the tasks of patent professionals.

As of today, it is not possible to trust GAI tools with confidential information, since any prompt provided to these tools does not guarantee confidentiality and data protection, unless an entity creates its own sandbox with customized implementations that protect the data.

For patent prosecution, asking procedure questions seems like an appropriate use of GAI, since client information is not compromised, and who wouldn’t celebrate with great cheer being able to bury that good old MPEP (Manual of Patent Examining Procedure).

I recently had a scenario that does not happen often, so I decided to ask ChatGPT and Bard for help. My problem was that the name of the assignee in an assignment was incorrect because the company name was missing the  “Inc.” at the end.

I asked the question, “how do you correct an incorrect company name for an assignment at the USPTO.”

ChatGPT answered the following:

If you need to correct an incorrect company name for an assignment at the USPTO, you should follow the following steps:

1. Identify the type of assignment that needs to be corrected. Is it a trademark assignment, patent assignment, or another type of assignment?
2. Check the USPTO’s website to see if they have any specific instructions on how to correct an assignment. You can also contact the USPTO’s Assignment Recordation Branch for assistance.
3. Prepare a letter or form that clearly identifies the assignment that needs to be corrected, and explain the reason for the correction.
4. Include any supporting documentation that may be necessary to support the correction.
5. Submit the letter or form and any supporting documentation to the USPTO’s Assignment Recordation Branch. You can submit the correction electronically through the Electronic Patent Assignment System (EPAS), or by mail.

It’s important to note that there may be fees associated with correcting an assignment, so be sure to check the USPTO’s fee schedule. Additionally, you should always consult with an attorney or legal professional if you have any questions or concerns about the assignment correction process.

I thought that this did not help at all. An answer that includes “Check the USPTO’s website to see if they have any specific instructions,” would not help me overcome my wish to avoid the MPEP.

I asked Bard, and this was the answer:

To correct an incorrect company name for an assignment at the USPTO, you must file a corrected cover sheet with the Assignment Services Division. The corrected cover sheet must include the following information:

• • The correct company name
  • The incorrect company name
  • The application or patent number(s) that are affected by the error
  • A statement explaining the error
  • A signature of the person authorized to correct the error

You must also pay the required fee for each application or patent that is being corrected. The fee is currently $200 per application or patent.

You can file the 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 fee using a credit card. If you are filing by mail, you will need to send the corrected cover sheet, the required fee, and a copy of the originally recorded papers to the following address:

United States Patent and Trademark Office

Assignment Services Division

PO Box 1450

Alexandria, VA 22313-1450

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

Here are the steps on how to correct an incorrect company name for an assignment at the USPTO:

1. 1. Gather the required information. This includes the correct company name, the incorrect company name, the application or patent number(s) that are affected by the error, a statement explaining the error, and a signature of the person authorized to correct the error.
   2. Pay the required fee. The fee is currently $200 per application or patent.
   3. File the corrected cover sheet. You can file the 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 once the corrected cover sheet is filed.

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

I was excited when I saw this answer, not only because it seemed to be on point, but because the answer showed that I didn’t have to go back to the inventors to get the signatures for the correction. It even included the link to a page where I could validate the answer.

Unfortunately, my initial joy quickly soured. First, the link was not valid and gave me the dreaded 404 error. Second, the information was for correcting the cover sheet, not an error in the assignment itself. Close, but no cigar!

I could have tried to refine the answer by adding more specific prompts, but I couldn’t trust any answer now, so I went back to the old ways: asking colleagues, looking at the MPEP, and even calling the Assignments Division at the USPTO. Unfortunately, I do have to chase inventors for new signatures in a corrective assignment.

The lesson is that it’s too soon to rely on GAI tools alone, the MPEP is here to stay, and any information provided by the tools will have to be validated. The good news is that this means job security for us patent professionals. For how long, we’ll find out soon enough.

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