On February 6, 2024, the United States Patent and Trademark Office (USPTO) issued guidance in the form of a memorandum from Katherine K. Vidal, the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO, governing the use of artificial intelligence for lawyers in front of the USPTO’s Patent Trial and Appeal Board (PTAB), as well as the Trademark Trial and Appeal Board (TTAB). The primary concern with these submissions are so-called AI hallucinations, i.e., fictitious case law generated by artificial intelligence (AI) that appears to support the position advanced by the party submitting the paper. Recognizing that use of AI may provide significant cost savings, the guidance indicates that “the USPTO already has experience with and rules addressing similar misconduct arising, for example, from human citations to irrelevant sources.” As such, no new rules are being implemented.

The USPTO’s director expects that the PTAB’s and TTAB’s existing rules, which include the USPTO rules of professional conduct as well the duties required for submission of filing, to be sufficient to address any concerns that may arise due to use of AI. For example, the existing rules require a thorough review of any papers submitted by the person signing the paper. The rules would include verifying the accuracy which would also encompass any AI hallucinations. When reviewing these documents, “[s]imply assuming the accuracy of an AI tool is not a reasonable inquiry.” The notice cautions that AI-generated or AI-assisted submissions mistaking facts or law could be papers that cause unnecessary delay or needless increase of the cost of proceedings. This may result in sanctions to the submitter.

These sanctions include, but are not limited to, striking the paper, precluding a party from submitting a paper, substantively impacting the weight accorded to the filing, terminating the USPTO proceeding, and even “in cases of knowing and willful violations, criminal liability under 18 U.S.C. § 1001.” In addition, the practitioner may be subject to disciplinary sanctions in front of the USPTO and state bars. “These sanctions, like the obligations that give rise to these sanctions, apply regardless of how a submission is prepared.” Thus, the existing rules are adequate to any issues that the USPTO may face due to use of AI in USPTO proceedings.

The guidance does not address use of AI in the drafting of patent applications or other USPTO filings. On that issue, the USPTO intends to publish an additional Federal Register Notice in the next few months “provid[ing] more guidance to the public concerning the USPTO's existing rules and their applicability to the use of AI tools by parties and practitioners.” This upcoming Notice will supersede the USPTO’s initial February 6, 2024, guidance to the extent there are any inconsistencies.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.