Chris Parsonson, Justin Doop
June 14, 2024

Using Generative AI Tools to Prepare USPTO Submissions

The integration of generative AI into the United States Patent and Trademark Office (USPTO) submission processes is reshaping the landscape of patent and trademark filings. This article provides an overview of all prior guidance from the USPTO on the use of AI and explores the multifaceted role of AI tools in enhancing efficiency, ensuring compliance, and navigating the complex legal and ethical landscapes of patent applications. From drafting patent applications to managing confidentiality and security, legal practitioners must adapt to maintain accuracy, inventorship integrity, and ethical standards in their submissions. Given the numerous practical applications and their benefits, generative AI is becoming an indispensable asset in legal practices, especially in interactions with the USPTO systems.

Using Generative AI Tools to Prepare USPTO Submissions

Generative AI and Its Relevance to USPTO Submissions

The USPTO published guidance on the use of AI in the Federal Registrar, including inventorship guidance for AI-assisted inventions and guidance on the use of AI-based tools in practice before the USPTO, which have touched on the following topics: 

1.    Inventorship in AI Patent Applications

The USPTO artificial intelligence guidance clearly states that AI cannot be recognized as an inventor. If AI assists, however, in the invention process, the current guidance states that significant human contribution (under the Pannu factors) is required for patentability. Additionally, the USPTO has requested comments from the public in connection with this topic in a notice, and several public comments have urged the USPTO to take a broader pathway to patentability

2.    Confidentiality and Security in AI Usage

According to the USPTO guidance on AI tools, practitioners must ensure that AI tools adhere to stringent confidentiality and security standards. This includes compliance with the USPTO foreign filing license requirements, ensuring data is secure from unauthorized export, and addressing national security and export control considerations.

3.    Reviewing AI-Generated Content for AI Patents

The USPTO guidance on AI tools suggests careful review of AI-generated content before submission for accuracy and completeness. 

4.    Ethical Considerations and Duty of Candor with AI Tools

The USPTO emphasizes a strict duty of candor and good faith when using AI tools in legal practices. This includes independently verifying AI-generated information and ensuring that all submissions are free of material misstatements or omissions.

5.    Use of AI in Interacting with USPTO Systems

AI systems are not recognized as users of the USPTO’s electronic systems. The USPTO guidance on AI tools specifies that practitioners must comply with all regulatory obligations, including those concerning direct human oversight of submissions made using AI.

Practical Applications of Generative AI in USPTO Submissions

The integration of generative AI into the patent application process presents numerous practical applications that can significantly enhance efficiency, accuracy, and innovation. One of the primary applications of generative AI is in the initial drafting of patent applications. AI tools can assist inventors and patent attorneys by automatically generating detailed descriptions of inventions based on initial inputs. This can include the creation of technical descriptions, claims, and abstracts, which are tailored to comply with patent office requirements. By automating this initial drafting process, generative AI can save time and reduce the workload on human experts, allowing them to focus on more complex and strategic aspects of patent filing.

 

Furthermore, generative AI can be utilized to perform prior art searches with a high degree of efficiency. AI algorithms can analyze vast databases of existing patents, scientific journals, and other technical documents to identify patentable aspects of a new invention. This capability not only speeds up the patentability review process but also enhances the thoroughness of these searches, potentially increasing the likelihood of identifying new and creative patentable aspects that might otherwise be overlooked. This can help in assessing the novelty of an invention more accurately, which is a critical factor in the patent granting process.

 

Another significant application of generative AI in patents is in the analysis of patent claims. AI systems can be trained to understand and interpret patent language, which can then be used to suggest modifications to strengthen the scope of patent claims or to identify potential vulnerabilities in a patent application. This can aid patent professionals in crafting robust claims that are better positioned to withstand legal scrutiny and potential challenges.

 

Generative AI can also assist in predicting patent prosecution and litigation risks by analyzing trends and patterns in existing USPTO art units and patent litigations. AI models can process historical data to identify characteristics of patents that frequently face disputes or are prone to challenges. This predictive capability can guide inventors and companies in strategic decision-making regarding patent applications and portfolio management, potentially reducing future legal disputes and strengthening IP positions.

 

In summary, the practical applications of generative AI in the patent application process are transformative. From streamlining the drafting of applications to enhancing the precision of patentability reviews and strengthening patent claims, AI technologies offer a suite of tools that can improve the quality, efficiency, and strategic management of patents. As these technologies continue to evolve, their integration into the patent landscape is likely to expand, offering even more sophisticated tools for inventors, attorneys, and patent offices worldwide.

Benefits of Using Generative AI in Patent Preparation 

Artificial Intelligence is revolutionizing the legal and patent industries, bringing with it a multitude of benefits that are being embraced by legal professionals, patent drafters, and in-house teams globally. The overarching impact of AI in these fields primarily centers around significant efficiency gains, which are being reported by many users who have integrated AI into their workflows.

 

One of the most pronounced benefits of AI is the improvement in efficiency, especially evident in the drafting of patent applications, creation and analysis of drawings, and reviewing of patent applications. This not only saves considerable time but also maintains the quality of output. Despite the pressures of cost and time constraints, AI ensures that the output remains consistent and of high quality, tailored to meet individual preferences. This reliability in maintaining high standards is critical in a field where precision is paramount.

 

Moreover, AI's ability to streamline processes allows legal professionals to shift their focus towards more strategic aspects of their work. For instance, they can allocate more time to providing value-added strategic advice and making impactful decisions. This includes spending more time analyzing and developing higher quality claims, which in turn enhances the service delivered to clients with faster response times. As a result, legal teams can handle an increased number of clients and cases, further amplifying their throughput and operational bandwidth.

 

Another significant advantage is the faster turnaround in the analysis and enhancement of disclosures, leading to quicker responses from outside counsel. This rapid processing capability of AI tools helps in strategic intellectual property management, enabling recipients to receive superior strategic advice on IP portfolio development. It also allows them to align this advice more effectively with their business objectives, optimizing the return on investment from their IP assets due to this focused strategic insight.

 

AI also stimulates prolific innovation by aiding in the generation of more comprehensive patent applications and invention disclosures. This not only improves the quality of submissions but also frees up valuable time for inventors to dedicate to research and development, rather than spending excessive time interacting with attorneys or filling out lengthy disclosure forms. Consequently, this reduces the barriers to patenting, simplifying the process and reducing the back-and-forth communication typically required between inventors, in-house teams, and outside counsel.

 

Ultimately, the integration of AI into the legal and patent drafting workflows provides a competitive edge. It frees up time for IP teams and outside counsel, allowing them to offer more strategic, tailored patenting advice that aligns closely with specific business objectives. This transformation brought about by AI not only enhances operational efficiencies but also elevates the strategic capabilities of legal teams, positioning themas more proactive and impactful in their roles.

 

Here, at Solve Intelligence, we are building the first AI-powered platform to assist with every aspect of the patenting process, including our Patent Copilot™, which assists with patent drafting, and future technology focused on patent filing, patent prosecution and office action analysis, patent portfolio strategy and management, and patent infringement analyses. At each stage, however, our Patent Copilot™ works with the patent professional and we have designed our products to keep patent professionals in the driving seat, thereby equipping legal professionals, law firms, companies, and inventors with the tools to help develop the full scope of protection for their inventions.