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USPTO Guidance on the Use of Artificial Intelligence-Based Tools in Practice Before the USPTO
Cantor Colburn Client Alert
On April 11, 2024, the United States Patent and Trademark Office (“USPTO”) issued guidance on the use of artificial intelligence (AI)-based tools in practice before the USPTO (the “Guidance”). 89 Fed. Reg. 25609 (Apr. 11, 2024). Cantor Colburn’s latest Client Alert, USPTO Guidance on the Use of Artificial Intelligence-Based Tools in Practice Before the USPTO, walks through the latest guidance in depth and provides a summary for practitioners.
The Guidance informs those practicing before the USPTO of the rules and policies that apply when AI-based tools are used in proceedings before the USPTO. The Guidance also alerts such individuals of the risks associated with the use of AI and provides some suggestions for mitigating those risks.
The USPTO issued the Guidance in response to the Biden administration’s “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” (October 30, 2023).
Takeaways
Practitioners can use AI-based tools when practicing before the USPTO, such as to draft documents, prepare forms, analyze USPTO data, and the like. However, practitioners must not run afoul of USPTO policies and procedures when using such AI-based tools. Practitioners should remain mindful of their duty of candor and good faith in dealings with the USPTO, especially where AI-based tools are used. Particularly, practitioners must review all papers prepared in whole or in part using AI-based tools to ensure that the papers are true and accurate before submission to the USPTO and must personally sign all submissions.
For Further Information and Assistance
Attorneys in Cantor Colburn’s Artificial Intelligence Practice Group have substantial experience representing clients in these types of matters. Primary contacts are:
- David Kincaid, Partner and Artificial Intelligence Practice Co-Chair, dkincaid@cantorcolburn.com
- Eric Baron, Partner and Artificial Intelligence Practice Co-Chair, ebaron@cantorcolburn.com
We welcome your questions regarding this matter and any other regarding your IP in general.
This client alert was written by David Kincaid with contributions from Eric Baron.
Please note that each situation has its own unique circumstances and ramifications. This Client Alert is for informational purposes only and is not legal advice.
