USPTO AI Guidance Highlights Risks for Practitioners and Public

The U.S. Patent and Trademark Office (USPTO) today announced guidance for practitioners and the public regarding the use of artificial intelligence (AI) in the preparation of filings for submission to the Office.

The guidance comes two months after the Office issued a guidance memorandum for the Trademark and Patent Trial and Appeal Boards (TTAB and PTAB) on the misuse of AI tools before the Boards that clarified the application of existing rules to AI submissions. That guidance was in part prompted by Supreme Court Chief Justice John Roberts’ 2023 year-end report, which acknowledged both the benefits and dangers of AI in the context of the legal profession. It also noted President Biden’s Executive Order on Safe, Secure, and Trustworthy AI, which directed the USPTO Director to issue recommendations to the President, in consultation with the Director of the Copyright Office, on potential executive actions to be taken relating to copyright and AI.

Today’s draft Federal Register Notice builds upon the February guidance and is aimed at reminding professionals, innovators, and entrepreneurs of the existing USPTO rules that protect against the potential “perils” of AI. These include the Duty of Candor and Good Faith; the Signature Requirement; Confidentiality of Information; Foreign Filing Licenses and Export Regulations; existing electronic systems’ policies; and duties owed to clients.

Similarly to the February 6 guidance for the TTAB and PTAB, today’s guidance reiterated that the USPTO’s rules requiring a signature and that the signatory attest that all statements made are believed to be true and have been confirmed by “an inquiry reasonable under the circumstances” apply equally to submissions made with AI assistance. “[A]ny paper submitted to the USPTO must be reviewed by the party or parties presenting the paper,” said today’s guidance. “Those parties are responsible for the contents therein. Simply relying on the accuracy of an AI tool is not a reasonable inquiry.”

While the use of AI tools does not generally have to be disclosed to the Office, “given the potential for generative AI systems to omit, misstate, or even ‘hallucinate’ or ‘confabulate’ information, the party or parties presenting the paper must ensure that all statements in the paper are true to their own knowledge and made based on information that is believed to be true.”

The guidance also provides examples in both the patent and trademark contexts. With respect to the use of AI tools in the invention process, for example, the Office said that “if the use of an AI tool is material to patentability as defined in 37 CFR 1.56(b), the use of such AI tool must be disclosed to the USPTO.” This was explained in more detail in the USPTO’s February 12 guidance document on “Inventorship Guidance for AI-assisted Inventions.” Practitioners also have a duty to refrain from filing or prosecuting patent claims that are known to be unpatentable, said the guidance, and therefore must modify the claims accordingly if drafted by an AI tool, as well as “take extra care” to verify their technical accuracy. Additionally, if AI tools are used to draft so-called prophetic examples, which describe reasonably expected future results, such as experiments that haven’t yet been performed, “appropriate care should be taken to assist the readers in differentiating these examples from actual working examples” (i.e. by using the proper tense), explained the guidance.

The document also outlined potential administrative problems posed by the widespread use of AI tools, particularly with respect to populating information disclosure statements (IDS) with citations for submission and to collect prior art references. “While AI could be attractive to some patent applicants and practitioners, the unchecked use of AI poses the danger of increasing the number and size of IDS submissions to the USPTO, which could burden the Office with large numbers of cumulative and irrelevant submissions,” said the guidance. Therefore, signatories to an IDS should ensure irrelevant information is removed lest it “be construed as a paper presented for an improper purpose because it could ‘cause unnecessary delay or needless increase in the cost of any proceeding before the Office.’”

With respect to trademark filings, any AI-generated specimens that don’t show actual use of the mark in commerce or other AI-created evidence that doesn’t actually exist in the marketplace should be particularly avoided, as well as “unnecessary or cumulative material,” as in the patent context.

With respect to general document filing, the Office explained that AI tools used to auto fill forms or upload documents to the USPTO website, for example, cannot electronically sign and cannot obtain a USPTO.gov account. The guidance also emphasized the potential confidentiality implications of using AI tools, both with respect to the inadvertent disclosure of client information and in the context of national security.

“Specifically, practitioners must be mindful of the possibility that AI tools may utilize servers located outside the United States, raising the likelihood that any data entered into such tools may be exported outside of the United States, potentially in violation of existing export administration and national security regulations or secrecy orders,” said the guidance.

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