USPTO Issues Detailed Guidance on Use of AI-Based Tools Before the Office

On April 11, 2024, the USPTO issued “Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office.” The Guidance is intended to inform practitioners and the public of the important issues that patent and trademark professionals, innovators, and entrepreneurs must navigate while using Artificial Intelligence (AI) in matters before the USPTO.  This publication follows an initial memorandum submitted on February 6, 2024 which briefly discussed this topic.  In particular, the new Guidance provides requirements for all submissions and correspondence with the USPTO, stating that any paper submitted to the USPTO must be reviewed by the party or parties presenting the paper and that simply relying on the accuracy of an AI tool is not a reasonable inquiry.  In the patent context, the Guidance states that “if the use of an AI tool is material to patentability as defined in 37 CFR 1.56(b), the use of such AI tool must be disclosed to the USPTO.”  One such example occurs “when AI makes contributions to drafting portions of the specification and/or claims (e.g., introducing alternate embodiments not contemplated by the inventor(s)), it is appropriate to assess whether the contributions made by natural persons rise to the level of inventorship, in accordance with the law and recent USPTO guidance.”  The Guidance from the USPTO should be carefully considered, especially as AI software tools to assist in the preparation and prosecution of patents become more prevalent among patent practitioners.