Checking of AI patenting for originality and ethics is an enduring process for USPTO examiners that the aff expands

[Leslie A, 5-8-2024, Skadden, “USPTO Provides Guidance on Using AI-Based Tools in Filing and Preparing Patent and Trademark Applications,” , accessed 7-9-2024, CM]

In this guidance, the USPTO acknowledges that the recent proliferation of AI-based tools can be beneficial to legal professionals and others that practice before the USPTO. However, it also focuses on the risks posed by overreliance on AI (such as, outputs with critical misstatements or omissions, or legal briefs with fictionalized citations and quotations) as well as those that can arise from sharing sensitive or confidential client information with AI-platforms, stressing the importance for practitioners using AI to ensure they are compliant with the Office’s standards and expectations. Practitioners must make sure to carefully review any work created with the assistance of AI and ensure that their use complies with their preexisting duties and obligations before the Office.

The guidance notably does not issue new rules and regulations that are specifically tailored to the AI context, consistent with the approach taken by the Copyright Office. See our March 6, 2023, client alert “Copyright Office Issues Guidance on AI-Generated Works, Stressing Human Authorship Requirement.”

The USPTO states it will continue to engage with the public on this topic as the use of AI advances and evolves. Companies and practitioners seeking to leverage AI-based tools should therefore closely monitor developments in both AI technology and statements by the USPTO in order to ensure compliance.