USPTO director issues guidance on AI use in legal proceedings
Kathi Vidal emphasises importance of responsible AI use and directing judicial boards to adhere to existing rules and policies | USPTO plans to release further guidance and seek public input.
The US Patent and Trademark Office (USPTO) has issued guidance to judicial boards regarding the misuse of AI in legal proceedings.
In a memorandum issued yesterday, February 6, director Kathi Vidal emphasised the need for adherence to existing rules and policies when employing AI in the drafting of legal submissions before the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB).
Vidal said the agency’s existing rules are “adequate” to address the challenges the USPTO is likely to face. However, the USPTO will be publishing more guidance concerning existing rules and their applicability to the use of AI tools.
The released guidance, titled "The Applicability of Existing Regulations as to Party and Practitioner Misconduct Related to the Use of Artificial Intelligence," clarifies existing regulations and outlines their application when AI is used in the preparation of submissions for the PTAB and TTAB.
Vidal quoted chief justice of the US John Roberts’ end-of-year report, which addresses the use of AI and states that AI “has great potential to dramatically increase access to key information for lawyers and non-lawyers alike”.
However, “at present AI has well-recognised shortcomings, including being prone to present inaccurate or nonsensical information as fact,” continued Roberts.
Vidal said the use of AI by those appearing before the PTAB and TTAB presents “opportunities to expand access and lower cost”.
However, there are also concerns, similar to those in federal courts, that AI will be misused or left unchecked, according to Vidal.
AI requires “responsible use and thoughtful policy,” and the guidance is a part of the USPTO’s efforts to shape that policy, added Vidal.
Clarifying existing rules
Vidal emphasised that in accordance with current regulations, any document submitted to the USPTO under signature must be reviewed by the individual presenting the document.
This approach, she explained, aims to understand the preparation process of the document, assessing the potential introduction of errors or omissions during its creation, and ensuring the accuracy of all factual and legal representations.
“Simply assuming the accuracy of an AI tool is not a reasonable inquiry,” said Vidal.
Additionally, under existing rules practitioners are not allowed to assert or dispute an issue in a proceeding unless there is a basis in law or fact for doing so.
A submission, including those generated or assisted by AI, that inaccurately represents facts or law may be considered a document presented for an improper purpose—because it could “cause unnecessary delay or needless increase in the cost of any proceeding before the office.”
In the coming months, the USPTO plans to publish a notice in the federal register, providing additional guidance to the public regarding the use of AI tools by parties and practitioners.
Additionally, in line with President Biden's executive order on Safe, Secure, and Trustworthy AI issued October 30, 2023, the USPTO will release guidance on the inventorship of AI-enabled innovations.
The agency plans to seek public input on various aspects of patentability and issue recommendations for executive action concerning copyright and AI.
Finally, the USPTO is collaborating with secretary of commerce Gina Raimondo and other federal agencies to guide US administration policy on key AI and IP topics.
These include the use of data in AI training, transparency and regulatory disclosures, trade secret protection, and the legal implications of AI-generated content.
