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The USPTO issued updated guidance on AI this month

On Behalf of | Apr 18, 2024 | INTELLECTUAL PROPERTY LAW - Intellectual Property

If someone comes up with an invention or process using artificial intelligence (AI), can they still patent it? Just how much of a role can AI play in the creation for it not to be eligible for a patent? Do they need to disclose the use of AI?

Those are among the questions that patent officials, the U.S. Supreme Court and even the president are seeking to answer. Earlier this year, President Biden directed the U.S. Patent and Trademark Office (USPTO) to provide official guidance on the use of AI and the disclosure of that AI contribution in filing for a patent. This month, the USPTO announced guidance that built on preliminary guidance it issued in February.

Inventors need to assume responsibility for the submitted creation

When filing the paperwork for a patent, the parties seeking a patent “are responsible for the contents therein. Simply relying on the accuracy of an AI tool is not a reasonable inquiry.” The guidance noted that “given the potential for generative AI systems to omit, misstate, or even ‘hallucinate’ or ‘confabulate’ information,” they 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.” The rules around the disclosure of the use of AI tools have been somewhat unclear. However, the guidance states that “if the use of an AI tool is material to patentability,” it must be disclosed.

Security concerns over use of AI for submissions

The guidance also notes a concern that if inventions using AI aren’t properly tested, there will be a flood of “irrelevant submissions” to the USPTO. Further, even if AI tools are used to complete and upload patent application documents to the USPTO site, they can’t be used to sign those documents. An AI tool cannot be listed as the name on a patent. The potential security risks – including risks to national security – were also noted.

The use of AI is still a comparatively new frontier in intellectual property. With laws and regulatory guidance bound to evolve, it’s critical to have experienced legal guidance when submitting and protecting your creations.