USPTO Guidance on Use of AI-Based Tools

The USPTO has issued several recent Federal Register Notices this calendar year. The latest, entitled Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office, 89 FR 25609 (April 11, 2024) (the “Guidance”) [1] comes on the heels of the Final Rule: Signature Requirements Related to Acceptance of Electronic Signatures for Patent Correspondence, 89 FR 20321 (March 22, 2024), Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations, 89 FR 19817 (March 20, 2024), Proposed Rule: Practice and Procedures in Trial Proceedings under the America Invents Act before the Patent Trial and Appeal Board, 89 FR 15531 (March 4, 2024), Updated Guidance for Making a Proper Determination of Obviousness, 89 FR 14449 (February 27, 2024) and the Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. 10043 (February 13, 2024).

Given the enormous interest in generative AI models, this most recent USPTO Guidance recognizes that practitioners are likely to use AI-based tools to prepare various documents, including patent and trademark applications, and other filings submitted to PTAB, TTAB, etc. The Guidance is also responsive to the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence, issued on October 30, 2023. The USPTO notes that “patent examiners are performing AI-enabled prior art searches using features like More Like This Document (MLTD)[2] and Similarity Search in the Office’s Patents End-to-End (PE2E) Search tool.”[3]

As is now well known, some AI models may be susceptible to “hallucinations,” resulting in content purportedly from, and references to, non-existent or fictitious documents. Additionally, model outputs may be erroneous. There can also be obvious issues involving client confidentiality. Although nothing in this latest Guideline changes expectations of how practitioners interact with the USPTO, this reminder as to the practitioners’ duties is timely, especially in the context of the use of AI. The Guidance reminds practitioners that although there is no general duty to inform the USPTO that an AI-based tool was used, the use of such tools can fall under several existing duties such as the Duty of Candor and Good Faith, Signature Requirement and Corresponding Certifications, Confidentiality of Information, Foreign Filing Licenses and Export Regulations, USPTO Electronic Systems’ Policies, and the Duties Owed to Clients.[4] Some key takeaways are:

1. Check the accuracy of all submissions and correspondences: All submissions and correspondences, regardless of whether they are signed statements, are a certification that “all statements to the party’s own knowledge are true and that the party performed an inquiry reasonable under the circumstances.” See, 89 FR 25609, 25614 (April 11, 2024). In particular, it is the responsibility of the practitioner to verify that the content of a submission and/or correspondence, including facts, evidentiary support and/or any arguments presented are indeed accurate and not incomplete. It is important to make sure that there are no “known material omissions [that are] not [in] accordance with the duty of candor and good faith.” Id. at 25615. This is especially relevant in the context of AI-based tools, including tools that are used to draft a patent application, draft claims, generate prior art references, auto-fill USPTO forms and/or automatically file/submit documents to the USPTO.
2. Verify inventorship when using AI to draft claims: Apart from the usual technical knowledge, adherence to statutory requirements and due diligence required for claim drafting, practitioners using AI-based tools to draft claims also need to confirm inventorship, and whether “one or more of the claims did not have a significant contribution by a human inventor.” Id. at 25614.
3. Keep your client informed: The Guidance also notes that “under 37 CFR 11.104(a)(2), practitioners must reasonably consult with the client about the means by which their clients’ objectives are to be accomplished.” In particular, to the extent any substantive document preparation and/or analysis is being performed by an AI-based tool, it may be best practice to keep a client informed, and/or obtain their informed consent, as to the type of AI tool being used, and/or the extent of such use.
4. Inform the USPTO if use of the AI tool is material to patentability: The Guidance states that “material information could include evidence that a named inventor did not significantly contribute to the invention because the person’s purported contributions were made by an AI system.” Id. at 25615. For example, the AI-based tool may generate alternate embodiments not conceived by a human. In particular, the types of information that could be material could include “the interaction with the AI system (e.g., the inputs/outputs of the AI system).” Id.