5 Things Lawyers Should Take Away From the USPTO's Recent Guidance on AI Use
On April 11, 2024The United State Patent and Trademark Office Issued Guidance to Parties and Practitioners Regarding the Use of AI.
On April 11, 2024 the United States Patent and Trademark Office (USPTO) issued guidance addressing the use of Artificial Intelligence (AI) in patent and trademark practices. The USPTO’s guidance (the Guidance) outlined existing rules and how they apply to AI-assisted tasks in USPTO proceedings, including document drafting and filing. It was issued in response to President Biden’s Executive Order calling for all relevant federal agencies to issue or enact policies that take advantage of the benefits of AI, while protecting against potential harms and threats associated with AI.1
The USPTO issued this Guidance to help practitioners understand how existing federal laws and USPTO rules apply to the use of AI in intellectual property (IP) law practices. The Guidance is in response to the increasing integration of AI tools in various legal tasks, such as drafting documents and conducting research, which necessitates clear regulatory frameworks to mitigate risks and ensure responsible use.
Key USPTO Rules Applicable to AI Use
There are several rules that the USPTO highlighted as being applicable to using AI in patent and trademark work:
- Duty of Candor and Good Faith (37 CFR 11.303 and 1.56): All parties involved in USPTO proceedings must disclose all information material to patentability and maintain honesty in their communications with the USPTO.
The Guidance underscores that the duty of candor and good faith is foundational to the ethical practice of law before the USPTO, as it is with practice before all tribunals. It is designed to ensure that the patent office can trust the submissions and representations made by practitioners, which is crucial for the effective and efficient operation of the patent system. Violations of this duty can lead to severe consequences, including sanctions, referral to the Office of Enrollment and Discipline, and even potential criminal penalties under applicable statutes.
Notably the duty extends beyond mere submission of information; it requires active and ongoing engagement in preventing deceptive or misleading practices. Practitioners must correct any material misstatements or omissions they discover in previously submitted information.
- Signature Requirements (37 CFR 1.4(d) and 2.193): All documents filed with the USPTO must be personally signed by the practitioner, ensuring accountability and preventing unauthorized AI-generated submissions.
- Confidentiality of Information (37 CFR 11.106): Practitioners must protect confidential information and prevent unauthorized or inadvertent disclosure through AI systems, highlighting the importance of secure data handling.
The Guidance also discusses national security concerns, particularly in relation to the confidentiality and export of sensitive information when using AI systems. It notes that practitioners must be mindful of where AI systems may store or process data, especially if servers are located outside of the United States, to comply with export control laws and regulations. This is crucial to prevent unauthorized access or potential breaches of client confidentiality and national security. The guidelines also highlight the importance of adhering to existing laws, such as the export regulations under various U.S. codes (e.g., 15 CFR parts 730 through 774, and 22 CFR parts 120 through 130), which regulate the international transfer of sensitive technologies and information. This ensures that the use of AI does not inadvertently violate national security protocols or client confidentiality.
These go hand-in-hand with the ABA Model Court Rules for litigation practices and requirements of Candor Toward the Tribunal, Confidentiality of Client Information, and Bringing Meritorious Claims. and are mirrored in state court rules which require the same or very similar duties.
2. Ethical Considerations and Practitioner Responsibilities
The Guidance emphasizes the ethical implications and responsibilities of using AI in legal practices, urging practitioners to ensure that their use of AI does not compromise the integrity of their work or violate client trust. The bottom line here is that lawyers and legal professionals must not overlook the need for human oversight in all AI-related tasks. This will not only prevent errors and embarrassment but also help maintain professional standards.
Interaction with AI Tools
According to the guidance issued by the USPTO, there is no general obligation for practitioners to notify the office if AI tools were used in the preparation of documents or other submissions. The guidance emphasizes that the responsibility for the accuracy and integrity of submissions remains with the practitioners, who must ensure that all information, whether assisted by AI or not, complies with the duty of candor and all other applicable rules. The emphasis is on the final content and the truthfulness of the submissions rather than the tools used to create them. The USPTO’s Guidance reminds us that while AI tools can enhance the practice before the USPTO by aiding in tasks such as data analysis and document drafting, these tools do not absolve us as practitioners of our duties under the rules of practice. It is imperative that practitioners maintain a direct and thorough review process to ensure compliance with ethical obligations, particularly the duty of candor.
Continued Engagement and Future Considerations
The USPTO commits to ongoing dialogue with stakeholders through initiatives like the Artificial Intelligence / Emerging Technologies Partnership. The AI / ET Partnership is an initiative created by USPTO to engage with non-profits, small businesses, academia, innovators and anyone interested in AI to evaluate and address the unique challenges presented by AI technologies. Through this engagement, the USPTO aims to refine policies and ensure that the legal framework keeps pace with technological advancements. At the rate that AI and ET are advancing, keeping pace would seem to be a lofty, but worthy goal.
Implications for Legal Practice and IP Law
By delineating how existing rules apply to AI, the USPTO is seeking to clarify and to facilitate the integration of AI in IP law while safeguarding the legal and ethical standards of the profession. This seems eminently reasonable since AI and ET are closely related to IP law. The Guidance serves as a resource for practitioners navigating the complexities of AI in legal settings, ensuring compliance and fostering innovation within the bounds of federal law.
The AI / ET Partnership regularly hosts events, usually with a virtual option, with the hopes of maintaining the U.S.’s lead in AI and ET, obtaining feedback from interested parties in an effort to keep patent and trademark law efficient and timely.
In conclusion, the USPTO's guidance on the use of AI in patent and trademark processes emphasizes the critical importance of maintaining candor and good faith in all interactions with the tribunal. This duty, deeply embedded in the ethical framework of legal practice, requires practitioners to be vigilant in their submissions, ensuring that all information is accurate and all communications are truthful, irrespective of the assistance of AI technologies. The Guidance serves as a reminder that while AI can streamline and enhance the efficiency of legal practices, it does not diminish each individual practitioner's responsibility to adhere to the highest standards of integrity. As the landscape of legal technology evolves, continuous engagement with these ethical standards will be essential for upholding the credibility and reliability of the patent and trademark systems.