Not Every AI Output Belongs in an IDS

An AI interaction can give rise to a Rule 56 disclosure obligation. Not because AI was involved, but because of the information the interaction put before you.

The U.S. Patent and Trademark Office (USPTO) has already drawn that line. Its April 2024 guidance says there is no general obligation to disclose that an AI tool was used; the duty is implicated when the use rises to the level of materiality under Rule 56(b). The trigger is materiality, not AI.

That matters because generative AI puts several legally different things into one chat window. A model can surface a real reference, fabricate one, state a potentially material fact, or draw a conclusion about patentability. Because all of those arrive through the same conversational interface, it is easy to treat “AI output” as a single legal category. It is not.

Classification means identifying what the model actually put before you: a real reference, a fabricated or miscited reference, a factual statement or inconsistency, or a legal conclusion, and then deciding what Rule 56 requires you to do with it.

Rule 56 Still Asks the Old Question

Rule 56 imposes on each individual associated with the filing and prosecution of an application a duty of candor and good faith, which includes a duty to disclose all information known to that individual to be material to patentability. Information is material when it is not cumulative to information already of record or being made of record in the application, and it either establishes a prima facie case of unpatentability of a claim or refutes, or is inconsistent with, a position the applicant takes in opposing an argument of unpatentability relied on by the Office or asserting an argument of patentability.

That definition matters. Materiality is not a synonym for relevance. Rule 56 is broad about what can count as “information,” but specific about when that information becomes material.

MPEP § 2001.04 treats “information” broadly. In addition to patents and publications, it lists information on enablement, possible prior public uses, sales, offers to sell, derived knowledge, prior invention by another, inventorship conflicts, litigation statements, and the like. The next subsection supplies the limiting principle: under MPEP § 2001.05, information is not material unless it comes within Rule 56(b)(1) or (2), and cumulative information is excluded.

Put differently: not all prior art is material, and material information need not be prior art.

Dayco Products, Inc. v. Total Containment, Inc. shows why prior-art status does not itself answer materiality. Dayco had related applications before different examiners. One examiner rejected substantially similar claims using U.S. Patent No. 3,331,981 (the “Wilson” patent); the examiner handling the patents at issue was not told about either Wilson or the rejection. The Federal Circuit treated them separately. Wilson’s use by the other examiner was informative but not dispositive; materiality still required comparison with the pending claims and the art already before the examiner. The rejection itself, however, was material under Rule 56(b)(2) because it was inconsistent with the applicant’s implicit position that the pending claims were patentable. One episode produced two different legal objects, and Rule 56 did not treat them as interchangeable.

That distinction concerns what the information is. How it reaches the person is a separate question. MPEP § 2001.06 recognizes that material information may reach a covered person through co-workers, trade shows, competitors, third parties, foreign or related U.S. applications, litigation, or regulatory proceedings. Materiality turns on the information, not how it arrived.

The same is true when the information comes through AI. A chat can surface a publication, reveal a fact about an earlier sale or public use, reproduce a contradictory technical statement, or generate a patentability argument. Rule 56 does not impute everything a model may contain or be capable of producing. What matters is the information actually put before the person.

Whether something is prior art is a Section 102 question; whether information is material is a Rule 56 question. The two do not rise and fall together.

The USPTO Has Already Warned Against the Transcript-Dump Instinct

The April 2024 guidance anticipated a version of this problem. The guidance recognized that AI can collect prior art and populate an information disclosure statement (IDS) and warned that unchecked use could burden the Office with cumulative and irrelevant submissions. A natural person must sign the IDS after a reasonable inquiry that includes reviewing each listed reference; clearly irrelevant and marginally pertinent cumulative information should be removed. The duty of disclosure cannot be transferred to an AI tool.

MPEP § 2004, item 10, still says that when in doubt it is desirable and safest to submit information. But that concerns doubt about materiality, not whether a citation exists or what the information is. Section 2004 is best-practice guidance, not a requirement. “When in doubt, disclose” does not eliminate classification.

That points toward the right operating rule. Do not ask whether “the AI output” belongs in an IDS. Ask what the output actually is.

Four Things Can Come Out of the Same Chat Window

The sequence is similar across all four: identify what the model produced, verify the underlying information, apply materiality and cumulativeness, and determine what the actual disclosure object is. Different categories stop at different points in that sequence. The chat itself is not the default disclosure object.

1.    A real reference

Verify that the reference exists and was identified accurately, then apply ordinary Rule 56 materiality and cumulativeness analysis. If it is material and noncumulative, disclose the reference. The model’s summary ordinarily is not the disclosure object.

2.    A reference that does not exist, or is materially miscited

If the cited reference does not exist, there is no reference to disclose. If a real document was materially miscited, verify the actual document and analyze it under Rule 56; separately evaluate any factual information the interaction conveyed. Do not convert a fabrication into an Office filing. Under 37 C.F.R. § 11.18(b)(2)(iii), presenting a paper certifies, after reasonable inquiry, that its factual contentions have evidentiary support, and the Office has said that relying on an AI tool’s accuracy is not a reasonable inquiry.

3.    A real fact, admission, or inconsistency

Verify the underlying fact and determine whether it is material and noncumulative. If so, disclose it through the appropriate prosecution record. Rule 56 is not limited to prior-art documents. MPEP § 2001.04 includes enablement information and litigation statements, among other things.

The cases show why material information cannot be reduced to prior art. In Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., a scientific article that was not prior art was nevertheless material because its technical statements raised an enablement issue. In Purdue Pharma L.P. v. Endo Pharmaceuticals Inc., the material information was not another reference but the undisclosed fact that a patentability argument rested on inventor insight rather than experimental proof; the Federal Circuit found that fact material while vacating the inequitable-conduct judgment on intent.

AI’s role in surfacing the information does not determine its materiality or disclosure vehicle.

4.    A model synthesis or legal conclusion

Treat the model’s synthesis as a lead. Verify the references, facts, or technical statements it relies on, and separately evaluate any information the interaction itself conveys. The default disclosure object is the underlying verified information, not the model’s prose. A model’s confidence does not make its characterization authoritative.

Still, do not dismiss the reasoning merely because a model generated it. Rule 56 asks what information, alone or in combination, establishes a prima facie case of unpatentability. If the model connects two verified references in a potentially material combination, evaluate that combination independently and reassess the references. AI can reveal materiality without creating new prior art.

One principle cuts across all four: cumulativeness still matters. Ten AI summaries of one reference are not ten pieces of prior art. Volume is not materiality.

Verification is Not a Search Duty

None of this creates a duty to conduct a prior-art search as a prerequisite to filing. MPEP § 410 expressly says that the reasonable-inquiry requirement in Section 11.18 creates no new duty for an applicant to conduct one. But Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp. makes the converse clear: information that appears material and questionable cannot be ignored once brought to an attorney’s or applicant’s attention. AI changes neither rule. Verifying what the tool puts before you is not an obligation to go looking for more.

Who Encounters the Information Matters Too

That raises a related question: whose knowledge counts? Rule 56 covers named inventors, prosecuting attorneys and agents, and other persons substantively involved in preparing or prosecuting the application who are associated with the inventor, applicant, assignee, or anyone to whom there is an obligation to assign the application.

The relevant AI interaction may occur before counsel enters the picture. If an inventor encounters genuinely material information while developing the invention or researching the field, that knowledge still matters once prosecution begins. The filing date is not an amnesia event.

That does not require collecting every AI session or creating a new client-intake interrogation. It means material information does not become different for Rule 56 purposes merely because it was encountered through AI.

Over-Disclosure Has Consequences

The opposite error would be treating every AI artifact as something to submit. One reason for that instinct is fear of inequitable conduct. But inequitable conduct applies a different materiality standard. Under Therasense, it generally requires but-for materiality plus separate proof of specific intent to deceive, subject to an exception for affirmative egregious misconduct. The Office proposed conforming Rule 56 to the Therasense materiality standard in 2011 and again in 2016, but neither proposal was finalized. The disclosure decision during prosecution remains governed by Rule 56. It is not litigation insurance.

Rule 56’s materiality and cumulativeness limits also matter for practical reasons. Since January 19, 2025, an IDS size fee applies when cumulative applicant- or patent-owner-provided items exceed 50 but do not exceed 100 ($200), exceed 100 but do not exceed 200 ($500), or exceed 200 ($800), with later tiers reduced by amounts previously paid. Every IDS must also include the written assertion required by 37 C.F.R. § 1.98(a)(4) stating whether the applicable § 1.17(v) fee accompanies the IDS or no fee is required.

Volume can matter beyond cost. In Ecto World, LLC v. RAI Strategic Holdings, Inc., a precedential Director Review decision involving an IDS with over 1,000 references, the examiner asked the applicant to identify references warranting particular attention and received no response of record. The Board was instructed to consider that circumstance under Section 325(d), not as a Rule 56 or inequitable-conduct holding.

Rule 56 still controls what must be disclosed, and filing an IDS is not an admission that cited information is material. 37 C.F.R. § 1.97(h). But treating every AI output as a disclosure object is not a neutral response to uncertainty. Indiscriminate disclosure carries costs beyond clutter.

Knowing What You Have is the Work

AI did not create a new duty of disclosure. It created a much faster way to put very different kinds of information in front of people who already owe that duty.

That makes identifying what the output actually is more important, not less. The same chat can surface prior art, fabricate a reference, reveal a material fact, or propose a new patentability theory. Only some of those roads lead to an IDS.

Knowing which one you are looking at is still the lawyer’s job.

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