On April 11, 2024, the USPTO revealed its “Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States” in the Federal Register (the “Guidance”). As the title suggests, the doc supplies further opinions and steering from the USPTO on the usage of AI instruments for prosecuting patent and trademark functions earlier than the USPTO.
While the Guidance particularly acknowledges the potential for AI instruments to convey nice advantages to society, it additionally acknowledges the necessity to “cabin the dangers from the usage of AI in observe” by way of “human governance” and “technical mitigations.” Those two checks on AI function the general theme of the steering.
The doc first outlines the actual guidelines and insurance policies which might be implicated by means of AI instruments in making ready and prosecuting functions, together with:
(1) The Duty of Candor and Good Faith
(2) Signature Requirement and Corresponding Certifications
(3) Confidentiality of Information
(4) Foreign Filing License and Export Regulations
(5) USPTO Electronic Systems’ Policies
(6) Duties owed to Clients, together with competent and diligent illustration of a consumer.
The Guidance then discusses the usage of AI for (A) Preparing paperwork for submitting with the USPTO, (B) Filing paperwork with the USPTO (C) Accessing USPTO IT Systems, (D) Confidentiality and National Security concerns, and (E) Fraud and Misconduct.
Human Governance
In order for patent practitioners to take care of their moral obligations with the usage of AI, they have to oversee and log off on the output of the instruments. This theme is obvious throughout the primary two areas of AI use that the article covers – making ready and submitting paperwork with the USPTO.
Papers filed with the USPTO should be signed by the occasion or events presenting the paper. If an AI system was used to draft or edit a doc, the practitioner signing the doc remains to be accountable for the contents of that doc, and should make sure that all statements “are true to their very own data and made primarily based on data that’s believed to be true.” The steering makes clear that practitioners should assessment the outputs of the AI to be sure that all the knowledge is correct. For instance, if AI assists with discovering prior artwork and making ready an IDS, the practitioner should assessment the IDS and take away “clearly irrelevant and marginally pertinent cumulative data.”
Additionally, the Guidance states {that a} practitioner should additionally make sure that there aren’t any vital omissions from the papers. While the USPTO doesn’t require {that a} practitioner disclose if a paper was ready with help from AI, there could also be situations the place disclosure of AI is required. One instance that’s used repeatedly in the Guidance is the usage of an AI software to draft claims. “[I]f an AI system is used to draft patent claims which might be submitted for examination, however a person listed in 37 CFR 1.56(c) has data that a number of of the claims didn’t have a big contribution by a human inventor, that data should be disclosed to the USPTO.”
Technical Mitigations
The Guidance additionally discusses the significance of offering technical safeguards on this new know-how to forestall potential future unauthorized entry or breaches of confidentiality.
The Guidance makes clear that the consumer of an AI software has the accountability for any adverse penalties of the usage of AI, even for the extra technical elements of the software. Users should make sure that the software doesn’t retain confidential data that could be used to coach the AI software or disclose the knowledge to 3rd events. Additionally, if an AI software makes use of servers which might be situated outdoors the United States, this might implicate nationwide safety, export management, and international submitting license points.
By making certain the right technical mitigations are in place, practitioners can reap the advantages of those instruments with out risking implicating any of the problems outlined above.
Conclusion
It is encouraging to see the company whose mission is to drive innovation embrace the usage of one of the crucial progressive – and highly effective – applied sciences of the present age. The Guidance makes an attempt to strike a steadiness between the dangers and rewards of this new know-how not by creating new guidelines, however relatively by clarifying how the usage of AI is impacted by the principles and insurance policies which might be already in place.
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USPTO Embraces AI Tools in New Guidance
