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Our Take on AI

| 2 minutes read

USPTO Releases Guidance for Practitioners on the Use of AI

The United States Patent and Trademark Office (USPTO) has issued a notice providing guidance on the use of Artificial Intelligence (AI) in matters before the Office. The guidance, which is applicable as of April 11, 2024, aims to inform practitioners and the public of the important issues that must be navigated while using AI in the preparation and prosecution of patent and trademark applications, as well as other filings before the USPTO.

USPTO Recognizes Benefits and Risks of AI in IP Community

The USPTO acknowledges the potential benefits of AI in maximizing efficiency and improving quality in the IP community. However, the Office also recognizes the risks associated with the use of AI, such as the potential for incomplete or inaccurate outputs, inadvertent disclosure of confidential information, and violations of existing rules and policies.

The guidance provides an overview of the USPTO's existing rules and policies that apply to the use of AI in practice before the Office. These include 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 duties owed to clients.

Applying Existing Rules to AI Use in Various Contexts

The notice discusses the application of existing rules to the use of AI in various contexts. When using AI for document drafting, individuals must review and verify the contents to ensure compliance with USPTO rules and certifications, correct any errors or omissions, and disclose the use of AI if it is material to patentability.

When filing documents with the USPTO, the signature must be from a natural person and not an AI tool. Users must also comply with USPTO policies regarding electronic filing and not exceed authorized access. When accessing USPTO IT systems, users must ensure they have proper authorization and avoid generating unusually high numbers of database accesses.

The guidance also highlights the potential for inadvertent disclosure of client-sensitive or confidential information to third parties when using AI, which may violate confidentiality obligations and implicate national security, export control, and foreign filing license issues.

The USPTO emphasizes that it does not tolerate fraud or intentional misconduct in any proceeding or in connection with accessing USPTO IT systems. Violators are subject to criminal, civil, and/or administrative action and penalties.

The notice underscores the importance of responsible AI use while acknowledging the potential risks and the need for human oversight and governance. The USPTO will continue to engage with the public and study considerations raised by the use of AI within the IP community to address the unique challenges posed by this rapidly evolving technology.

"Today’s notice is part of our work shaping AI policy, and encourages the safe and responsible use of AI to benefit the IP and innovation ecosystem,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “The requirements in existing USPTO rules serve to protect the integrity of our proceedings and to avoid delay and unnecessary cost, and they apply regardless of how a submission is generated. We will continue to listen to stakeholders on this policy and on all our measures to use AI responsibly and safely to democratize and scale U.S. innovation, creativity, and entrepreneurship.”