There’s no question that artificial intelligence (AI) has changed the way that many companies do business. It’s also caused questions and confusion about ownership rights and disclosure of the use of AI when seeking intellectual property (IP) rights. For example, if a business develops an invention or process with the help of AI, is it still patentable? Does the use of AI, regardless of how much or how little of a role it played, have to be disclosed?
Last year, former President Biden directed the U.S. Patent and Trademark Office (USPTO) to publish official guidance on these questions and others for those filing for patents and trademarks. Let’s take a brief look at some of the key points included in the USPTO guidance.
Avoiding overreliance on AI
According to the USPTO, when a party submits an application for a patent, they “are responsible for the contents therein.” They can’t assume that information generated by AI – either in the creation of a new invention or process or in preparing the application and paperwork to submit to the USPTO — is accurate.
The guidance says that “given the potential for generative AI systems to omit, misstate, or even ‘hallucinate’ or ‘confabulate’ information,” those seeking a patent or trademark must ensure that the statements they’re making are “true to their own knowledge and made based on information that is believed to be true.”
Disclosure of AI use and other concerns
Does the use of AI in creating something need to be disclosed in the USPTO filing. The guidance states that “those involved in patent proceedings have a duty to disclose all information—including on the use of AI tools by inventors, parties, and practitioners—that is material to patentability.”
The guidance also notes a concern about the “unchecked use of AI” and submissions that haven’t been adequately tested. It says this could “burden the Office with large numbers of cumulative and irrelevant submissions.” It also notes that an AI tool can’t be listed as the name on a patent or used to sign the submission paperwork.
Since AI is still a relatively new element in intellectual property, this guidance is likely to change. There’s also no way to know if and how much changes in leadership at the federal level will affect the USPTO’s policy and guidance. Having sound, experienced legal guidance helps businesses and individuals navigate this new frontier in intellectual property.