[E-trademarks] New USPTO guidance this morning to practitioners on use of AI in proceedings

[Joshua D. Waterston, Esq.]

The USPTO issued "Guidance on Use of Artificial Intelligence-Based Tools in
Practice Before the United States Patent and Trademark Office" this morning
(Press release here
<https://www.uspto.gov/about-us/news-updates/uspto-issues-guidance-concerning-use-ai-tools-parties-and-practitioners>
/ draft Federal Register notice here
<https://public-inspection.federalregister.gov/2024-07629.pdf>), similar to
its internal guidance to the PTAB and TTAB on February 6th
<https://www.uspto.gov/sites/default/files/documents/directorguidance-aiuse-legalproceedings.pdf>.
The guidance (especially Section III) clarifies to practitioners that:

   - Existing rules still apply (candor, good faith, review and
   certification of submissions, confidentiality, etc.).
   - The PTO recognizes that AI tools exist (for example, patent
   practitioners can use AI tools for prior art searches) and are permitted,
   but practitioners are responsible for signing off on all submissions.
   - Practitioners are responsible for reviewing and fixing errors and
   omissions in a document that was drafted with AI tools.
      - Ed. note: Filing a document with known errors remains a bad idea.
   - Using AI can result in inadvertent disclosure. "This can happen, for
   example, when aspects of an invention are input into AI systems to perform
   prior art searches or generate drafts of specification, claims, or
   responses to Office actions."
      - Ed. note: From a trademark perspective, using AI tools to research
      responses to Office Actions could disclose client confidential
information,
      such as strategy and other sensitive business data.
   - AI tools can't sign up for USPTO accounts: "USPTO.gov accounts are
   limited to natural persons and cannot be obtained by non-natural persons...
   [and] practitioners may not sponsor AI tools as a support staff individual
   to obtain an account."
      - Ed. note: I'm impressed that they thought of the loophole of
      claiming that an AI tool could be a "support staff individual"
      - Using AI tools to commit fraud or intentional misconduct involving
   submissions or the PTO website itself would be very much frowned upon.

*Summary*: much like the February 6th guidance to the PTAB and TTAB, this
guidance reiterates that existing rules apply to AI tools. My further
takeaway is that lawyers need to be diligent to not violate client
confidentiality obligations, need to review the output of AI tools (which
we don't generally need to do with Lexis or Westlaw, for example), and
essentially that lawyers can't use AI as an excuse if something goes wrong.
The buck stops with us.

Hat tip to my colleague Lewis Sorokin for his LinkedIn post
<https://www.linkedin.com/posts/lewissorokin_airegulation-copyrightlaw-generativeai-activity-7183870523515252737-V72X?utm_source=share&utm_medium=member_desktop>
this morning! We'll be presenting, along with Fred Wilf, at the Pennsylvania
Bar Institute's annual Technology Institute
<https://www.pbi.org/Meetings/Meeting.aspx?ID=46413> on April 25th (live
webcast CLE), on the topic "Who Owns That? - Guiding Intellectual Property
Clients Through the A.I. Labyrinth." We hope to see you there.

Thanks,
Josh

Joshua D. Waterston, Esq., CIPP/US
(610) 544-8922
law at jwaterston.com
https://jwaterston.com
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