Navigating AI in Patent Matters Before the USPTO

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Insights from DorothyAI regarding the Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office

As a leading provider of tools and services empowered by AI, DorothyAI is deeply invested in staying abreast of regulatory guidance shaping the landscape of patent filings. Recently, the United States Patent and Trademark Office (USPTO) issued crucial guidance addressing the utilization of Artificial Intelligence (AI) in these matters, recognizing both its transformative potential and the imperative to manage associated risks effectively.

At DorothyAI, we embrace the USPTO’s commitment to maximizing the benefits of AI while prioritizing governance measures to mitigate risks. This guidance underscores the importance of adhering to existing rules and policies, emphasizing the integrity of proceedings and the reliability of patents.

Let’s delve into the core aspects highlighted in the USPTO guidance and explore how DorothyAI aligns with these principles:

Existing Rules and Policies:

  1. Duty of Candor and Good Faith: Practitioners are reminded of their obligation to act with candor and good faith, especially concerning disclosure of material information related to patentability. DorothyAI is dedicated to upholding the duty of candor and good faith, and we’ve crafted our products specifically to ensure compliance with this obligation, fostering transparency and trust through our tools and services.
  2. Signature Requirement and Certifications: The guidance outlines the certification requirements under 37 CFR 11.18(b) for presenting correspondence, which mirrors Rule 11(b) of the Federal Rules of Civil Procedure. It mandates that all statements must be true to the best of the party’s knowledge and belief, with penalties for falsification. DorothyAI supports this certification process and emphasizes providing accessible methods for practitioners to review information, ensuring adherence to guidance and preventing submission for improper purposes. We facilitate easy review mechanisms to aid practitioners in confirming the accuracy and integrity of documents prepared with AI assistance, reinforcing the importance of human oversight in legal proceedings.
  3. Confidentiality of Information: The confidentiality obligations of practitioners under 37 CFR 11.106(a) mandate that client information must be kept confidential unless specific conditions apply. Amendments made in 2021 aligned this rule with the ABA Model Rule 1.6, emphasizing practitioners’ duty to prevent unauthorized disclosure of client information. DorothyAI fully supports these confidentiality measures and operates as a closed system, ensuring that customer data is not utilized for training purposes and is not mixed with other customer data, maintaining the integrity and confidentiality of client information.
  4. Foreign Filing Licenses and Export Regulations: Patent practitioners must adhere to foreign filing license requirements before filing patent applications abroad or exporting technical data related to foreign application processes. According to 37 CFR 5.11(a), a license from the Commissioner for Patents is mandatory if the invention was made in the United States and either no US application has been filed or it has been filed less than six months prior to the foreign filing. Additionally, 37 CFR 5.11(b) specifies that this license also covers the export of technical data for foreign application preparation, filing, or prosecution purposes. Yep, makes sense to us so follow the rules.
  5. USPTO Electronic Systems’ Policies: Access to USPTO electronic systems is subject to terms and conditions, and violating them may result in legal consequences under federal and state law, as well as penalties administered by the USPTO. Users may need to create a USPTO.gov account and adhere to specific procedures to utilize services like Patent Center for patent filings or P-TACTS for inter partes disputes, all of which require individual USPTO.gov accounts and compliance with Terms of Use prohibiting unauthorized access or use of USPTO data. DorothyAI supports adherence to these regulations and we strictly adhere to these terms and do not engage in any unauthorized access, use, modification, or disclosure of USPTO data.
  6. Duties Owed to Clients: The USPTO Rules of Professional Conduct mandate practitioners to provide competent and diligent representation, as outlined in 37 CFR 11.101 and 11.104, which align with ABA Model Rules 1.1 and 1.3. Practitioners are required to possess the necessary legal, scientific, and technical expertise and must communicate effectively with clients to make informed decisions about representation. When utilizing AI tools, practitioners must ensure compliance with professional obligations, including maintaining competency and diligence, and DorothyAI supports practitioners by providing tools and resources to enhance their legal, scientific, and technical knowledge, enabling them to meet their professional responsibilities effectively. Additionally, DorothyAI’s Activ8 Alignment Tool emphasizes the importance of clear communication with clients to ensure informed decision-making throughout the representation process.

Application of Existing Rules with AI:

  1. Use of Computer Tools for Document Drafting: DorothyAI acknowledges the increasing use of AI-driven tools for drafting patent and trademark documents. While there’s no explicit prohibition, we emphasize the importance of accuracy and compliance with USPTO policies.
  2. Reviewing Submissions and Correspondence: The use of AI tools in the invention creation process or practicing before the USPTO requires practitioners to consider their duty of disclosure, particularly if the AI’s involvement is material to patentability. Practitioners are obligated to ensure that claims, specifications, and drawings drafted using AI tools meet patentability standards and accurately disclose technical information. Additionally, when relying on AI for evidence submission or drafting, practitioners must verify the accuracy of factual assertions and ensure compliance with USPTO regulations. For example, the use of AI to populate IDS forms and collect prior art references may lead to an increase in submissions, potentially burdening the USPTO with irrelevant information. Practitioners are reminded of their duty to personally review and certify IDS submissions for compliance with USPTO regulations, ensuring that only relevant and necessary information is included to avoid unnecessary delays or costs. DorothyAI understands the challenges associated with AI-assisted IDS submissions and emphasizes the importance of practitioners’ personal review and verification to maintain compliance with USPTO regulations. We offer our CrossCite tool and resources to assist practitioners in efficiently managing IDS submissions and ensuring the accuracy and relevance of the information provided, ultimately supporting the integrity of the patent application process.
  3. Additional Examples in Patent and Trademark Contexts: DorothyAI emphasizes the responsibility of practitioners in disclosing AI-generated inventions or claims. Technical accuracy, statutory compliance, and proper inventorship remain paramount in both patent and trademark submissions.
  4. Confidentiality and National Security Considerations: The use of AI in USPTO practice may inadvertently expose client-sensitive or confidential information to third parties, raising concerns about confidentiality breaches and potential violations of practitioners’ obligations under 37 CFR 11.106. Practitioners must exercise caution when utilizing third-party AI tools or services to ensure the confidentiality of client data and compliance with professional conduct rules. DorothyAI emphasizes that we do not utilize customer data to train our systems, nor do we commingle customer data, prioritizing the security and confidentiality of client information. We are committed to safeguarding sensitive client information, mitigating risks associated with inadvertent disclosure.