USPTO lets practitioners use artificial intelligence tools and holds the signer to a full reasonable inquiry

2024-04-11USPTO

Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office, 89 Fed. Reg. 25609 (Apr. 11, 2024), Docket No. PTO-P-2024-0013

The USPTO issued guidance, applicable on publication, explaining how existing rules apply when practitioners and parties use artificial intelligence tools in matters before it. There is no general obligation to disclose to the Office that an artificial intelligence tool was used, but the use must be disclosed where it is material to patentability under Section 1.56(b) of Title 37 of the Code of Federal Regulations, and the notice repeats that all patent claims must have a significant contribution by a human inventor. A signature on a paper carries the reasonable-inquiry certification of Section 11.18, and simply relying on the accuracy of an artificial intelligence tool is not a reasonable inquiry; the party presenting a paper must have reviewed and verified it, including the accuracy of citations to case law and other references. The notice warns that artificial intelligence systems may retain information users enter and use it to further train their models, implicating the confidentiality duty of Section 11.106, and that tools may use servers located outside the United States, potentially in violation of export administration and national security regulations. Artificial intelligence systems may not obtain USPTO.gov accounts, and practitioners may not sponsor them as support staff. It also cautions that unchecked use of artificial intelligence to populate information disclosure statements could burden the Office with cumulative and irrelevant submissions.

What it changesThe guidance changes no rule; it applies existing ones, and the practical consequences fall on the in-house program that buys drafting tools and supervises outside counsel. Before any unfiled invention disclosure, draft claim or office action response goes into a third-party model, the program needs contract terms that bar retention of and training on the input and fix where processing happens, because an unfiled application is among the most confidential documents a company has, and a server abroad can turn a drafting session into an export of controlled technical data. Outside counsel guidelines should require counsel to identify the tools they use and the terms they use them under, and to confirm human review of every citation and every reference list, since the signer cannot rely on the tool. Where a model contributed to the invention itself, rather than to the drafting, the inventorship record becomes a candor question, and it should show the human contribution to each claim.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

This is general information about a published decision, agency guidance or piece of legislation. It is not legal advice and does not create an attorney-client relationship. Items concerning offices outside the United States are reported for information only and are not counsel on the law of those countries.