[Patentpractice] Use of Docketing Services and AI in patent practice

Thu Apr 11 12:06:15 UTC 2024

Thought these two blog posts below are informative and important.

Regarding the use of third party services, e.g., docketing services… Seems to me that a claim by the law firm against the vendor would also fail considering that standard best practices are that the responsible attorney double checks docketed dates and maintains a secondary docket means (e.g., paper diary, Outlook calendar, etc.).  Also, standard in law practice, the responsible attorney of a given matter is ultimately responsible.

Anyway, both are good quick reads.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
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From: Prof. Dennis Crouch <dcrouch at patentlyo.com>
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To: Suzannah K. Sundby <suzannah at canadylortz.com>
Subject: Dennis Crouch's Patently-O Daily Review: Using AI in your Patent Practice

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From Today:
Using AI in your Patent Practice<https://patentlyo.us18.list-manage.com/track/click?u=4e7677578b82656a8e72dc1dc&id=29f5a8769b&e=a37a2adccd>
By Dennis Crouch
Over the past year I’ve been investigating various generative Artificial Intelligence (GenAI) tools for assisting patent attorneys in their practice.  I have a strong belief that these tools and their progeny are now fixtures in our legal environment and are being used to both improve efficient delivery of legal services and to also improve the quality of those services.  Of course the generative creativity of our LLMs go hand in hand with hidden false narratives or hallucinations. Vendors are stepping up to thread the needle here: providing valuable GenAI tools while limiting false story telling.  As we move forward some of the struggle will be a focus on how much the attorney needs to know about how the GenAI works in order to use it responsibly.
Enter the USPTO and its Wet Blanket: The USPTO has released new guidance on the use of AI tools in practice before the USPTO.  USPTO AI Usage Guidance<https://patentlyo.us18.list-manage.com/track/click?u=4e7677578b82656a8e72dc1dc&id=d9133584c9&e=a37a2adccd>.  The notice largely offers cautionary guidance — focusing on the need to mitigate the risks associated with the use of AI through both technical measures and human oversight. As stated in the notice, “While the USPTO is committed to maximizing AI’s benefits and seeing them distributed broadly across society, the USPTO recognizes the need, through technical mitigations and human governance, to cabin the risks arising from the use of AI in practice before the USPTO.”
One of the key takeaways from the notice is that existing USPTO rules and policies apply to the use of AI tools in matters before the Office. The notice is designed as a reminder to individuals involved in proceedings before the USPTO of that these pertinent rules and policies, and provides suggestions to mitigate the risks associated with AI use.
The duty of candor and good faith is a central focus of the guidance. The notice emphasizes that this duty applies to all conduct before the USPTO, stating that “the duty of candor and good faith applies to positions taken by applicants or parties involving the claimed subject matter.” Practitioners must ensure that any AI-assisted work product is carefully reviewed for accuracy and completeness before submission to the USPTO. It is not the AI filing work with the USPTO, but rather it is the party and their attorneys.
The notice also addresses the signature requirement and corresponding certifications under 37 CFR 11.18(b). By signing or presenting a piece of correspondence, the party certifies that all statements made therein are true to the best of their knowledge and that they have performed an inquiry reasonable under the circumstances. The notice makes the strong claim that “Simply relying on the accuracy of an AI tool is not a reasonable inquiry.”
In the context of patent applications, the notice provides specific examples of how the duty of disclosure may be implicated when using AI tools. For instance:
if an AI tool is used in drafting or editing a document, the party must still review its contents and ensure the paper is in accordance with the certifications being made. For example, given the potential for generative AI systems to omit, misstate, or even “hallucinate” or “confabulate” information, the party or parties presenting the paper must ensure that all statements in the paper are true to their own knowledge and made based on information that is believed to be true. Additionally, the party or parties should also perform an inquiry reasonable under the circumstances confirming all facts presented in the paper have or are likely to have evidentiary support and confirming the accuracy of all citations to case law and other references. This review must also ensure that all arguments and legal contentions are warranted by existing law, a non-frivolous argument for the extension of existing law, or the establishment of new law.
The guidance also addresses the use of AI tools in accessing and interacting with USPTO IT systems. Users must ensure that their use of these tools does not violate federal and state laws, as well as USPTO regulations and policies. The notice reminds users that “AI systems may not obtain a USPTO.gov account” and that “practitioners may not sponsor AI tools as a support staff individual to obtain an account.”
Confidentiality and national security considerations are also discussed in the notice. The use of AI tools may result in the inadvertent disclosure of client-sensitive or confidential information to third parties. Practitioners must be vigilant in ensuring the confidentiality of client data when using AI tools or relying on AI-related third-party services. The notice also warns that “AI tools may utilize servers located outside the United States, raising the likelihood that any data entered into such tools may be exported outside of the United States, potentially in violation of existing export administration and national security regulations or secrecy orders.”  The USPTO appears to be quite serious on this front – trying to make it crystal clear that fraud and intentional misconduct will not be tolerated in any manner before the Office or in connection with accessing USPTO IT systems.
Still, the Guidance attempts to establish a middle ground, recognizing that “[p]atent practitioners are increasingly relying on AI-based tools to research prior art, automate the patent application review process, and to gain insights into examiner behavior.”
We might talk through one simple example here.  With the USPTO’s upcoming fee increase for IDS filings in Fall 2024, many folks will be willing to pay to both identify the best prior art and to use automated tools to eliminate references that are  either cumulative or not material to the claims.    In some patent cases 10,000+ pages of prior art can easily be identified, and neither the patent attorney nor the examiner wants to individually cull through each reference.  AI tools seem to offer an excellent tool for reducing the problem.
The USPTO’s  guidance document raises a different concern – that the agency will be bombarded with too many references for an examiner to individually review.  On this point, the guidance doubles down on prior statements that:
By signing, [the patent practitioner who submits the IDS] is certifying that they have performed a reasonable inquiry—including not just reviewing the IDS form but reviewing each piece of prior art listed on the form—and determined the paper is compliant with 37 CFR 11.18(b). Regardless of where prior art is found, submitting an IDS without reviewing the contents may be a violation of 37 CFR 11.18(b).
In my view, this approach is backwards, especially when coupled with the new IDS fees — the biggest reason is that the USPTO examiner is better off with having more prior art than less prior art. Our search tools are powerful enough for examiners to very quickly search through 10,000 pages of documents to identify those that are most relevant to the claims being pursued and then rely upon them for a rejection.  This only becomes a problem when the patent office requires a human (either patent attorney or patent examiner) to actually read through each document individually.
The guidance offers other suggestions for using AI tools:

  1.  Drafting the patent specification itself as well as responding to office actions: “For example, recent tools directed to the IP industry include the ability to draft technical specifications, generate responses to Office actions, write and respond to briefs, and even draft patent claims.”
  2.  Conducting and reviewing prior art searches: “Patent practitioners are increasingly relying on AI-based tools to research prior art, automate the patent application review process, and to gain insights into examiner behavior.”
  3.  Generating patent claims: “In situations where an AI tool is used to draft patent claims, the practitioner is under a duty to modify those claims as needed to present them in patentable form before submitting them to the USPTO.”
  4.  Automating the patent application review process: “Patent practitioners are increasingly relying on AI-based tools to research prior art, automate the patent application review process, and to gain insights into examiner behavior.”
  5.  Preparing evidence of patentability or unpatentability: “AI systems could also be used in the submission of evidence of patentability or unpatentability (e.g., evidence of secondary considerations). Though AI may be used to identify evidence or even draft affidavits, petitions, responses to Office actions, etc., practitioners are required to verify the accuracy of factual assertions, both technical and legal, and ensure that all documents, including those prepared with the assistance of AI, do not introduce inaccurate statements and evidence into the record, either inadvertently or intentionally, or omit information that is material to patentability.”
USPTO’s guidance on the use of AI tools in practice before the Office is a timely and necessary response to the growing adoption of these technologies in the legal profession. Patent law professionals, including patent attorneys and USPTO patent examiners, must familiarize themselves with this guidance and ensure compliance with the existing rules and policies when utilizing AI tools in their practice.

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Docketing Nightmare: CPA Global wins Despite their Docketing Error; Law Firm still on the hook for Missed Deadline<https://patentlyo.us18.list-manage.com/track/click?u=4e7677578b82656a8e72dc1dc&id=b526fb5607&e=a37a2adccd>
By Dennis Crouch
In a recent unpublished decision, the Georgia Court of Appeals affirmed summary judgment in favor of CPA Global Support Services, LLC (“CPA”) (now part of Clarivate) against a claim of negligent misrepresentation brought by inventor James C. Robinson, M.D. and his patent holding company (Spectrum Spine).  Robinson’s firm FisherBroyles had relied upon the dates erroneously entered by CPA and missed the national stage filing deadlines.  The parallel case against FisherBroyles is still pending in Georgia state court. Robinson v. CPA Global Support Services, LLC, No. A24A0405 (Ga. Ct. App. Apr. 8, 2024). CPA vs Robinson<https://patentlyo.us18.list-manage.com/track/click?u=4e7677578b82656a8e72dc1dc&id=71ffd31154&e=a37a2adccd>.
The case serves as an important reminder about the limitations on vendor liability for negligent misrepresentation claims in the absence of contractual privity — and how attorneys are often stuck in the middle.
What are your thoughts on how to avoid this situation?
Background Facts and Procedural History
The relevant facts are as follows. Dr. Robinson, a neurosurgeon, invented a type of spinal implant. In 2009, Dr. Robinson and Spectrum (collectively “Plaintiffs”) hired law firm FisherBroyles to file patent applications for his inventions. FisherBroyles filed a provisional U.S. patent application for the spinal implant in March 2013. It then filed a PCT application and a non-provisional U.S. application in March 2014 that issued in 2018. US11051951<https://patentlyo.us18.list-manage.com/track/click?u=4e7677578b82656a8e72dc1dc&id=cee4669d8b&e=a37a2adccd>. Bottom line here for this case: the deadline to complete the international patent process was 30-31 months from March 2013 provisional, i.e. September or October 2015 depending on the specific country.
In February 2014, FisherBroyles contracted with CPA Global, the big IP management services company, to provide patent docketing services. CPA was given access to FisherBroyles’ IP management software to enter data relating to patent application deadlines. Importantly, the contract between CPA and FisherBroyles stated that the services “are supplied by CPA Global solely for use by [FisherBroyles] only” and “CPA Global expressly excludes any liability arising from the use of the Deliverables by any third party.” It also specified that CPA was acting as an independent contractor, not an agent or partner of FisherBroyles.
In March 2014, a CPA employee incorrectly entered the priority date for Dr. Robinson’s PCT application as March 15, 2014 instead of March 15, 2013. This caused the docketing software to miscalculate the international filing deadlines as September 2016 instead of September/October 2015. Unrelated to this particular typo, FisherBroyles terminated CPA’s services in May 2014 – just three months into the engagement.
The error was discovered in September 2016 when FisherBroyles attempted to file the national stage applications, after the 2015 deadlines had already passed. This caused the Plaintiffs to miss the filing deadlines in certain countries.
In September 2020, the Robinson sued FisherBroyles for malpractice and breach of contract. He also sued CPA for negligent misrepresentation, alleging CPA negligently supplied false information (the incorrect priority date) that CPA knew or should have known the Plaintiffs would rely on, resulting in economic losses of about $90 million.
The case against FisherBroyle is ongoing in Georgia state court, but the trial court granted summary judgment to CPA on the negligent misrepresentation claim. A Georgia appellate court recently affirmed that decision.
The Court of Appeals’ Decision
The unanimous decision began by laying out the elements of negligent misrepresentation in the state:
[O]ne who supplies information during the course of his business, profession, [or] employment . . . has a duty of reasonable care and competence to parties who rely upon the information in circumstances in which the maker was manifestly aware of the use to which the information was to be put and intended that it be so used. This liability is limited to a foreseeable person or limited class of persons for whom the information was intended, either directly or indirectly.
Robert & Co. Assoc. v. Rhodes-Haverty Partnership, 250 Ga. 680 (1983).
The Court noted that the key inquiry is whether the defendant (CPA) actually intended for the third party (Robinson) to rely on the false information:
[L]iability to [a] third party can attach [only if] it can be shown that the representation was made for the purpose of inducing third parties to rely and act upon the reliance.
Badische Corp. v. Caylor, 257 Ga. 131 (1987).
Applying these principles, the Court found the evidence did not support an inference that CPA intended for the Plaintiffs to rely on the incorrect priority date:
While the evidence in the record establishes that CPA knew that FisherBroyles had clients, it does not support an inference that CPA intended for the [Robinson] to rely on the incorrect dates… [T]here is nothing in the record to suggest that CPA inputted the dates ‘for the purpose of inducing [Robinson] to justifiably rely and act upon’ the data entry.
The Court emphasized that “CPA did not supply any filing dates to FisherBroyles and it never relayed any information to the Plaintiffs.” Rather, it was FisherBroyles that represented the incorrect deadline to Plaintiffs.
The Court also found the contract between CPA and FisherBroyles “further negate[d] any intention on the part of CPA for the Plaintiffs to rely upon their work,” given the disclaimers stating the services were for FisherBroyles’ use only and excluding liability to third parties. The Court characterized this as an “‘appropriate disclaimer’ which would alert those not in privity with [CPA] that they may rely upon [its data entry] only at their peril.”
Because the Plaintiffs failed to show CPA was actually aware of and intended their reliance, the Court affirmed summary judgment for CPA without addressing the other elements of negligent misrepresentation.
Key Takeaways for Patent Practitioners
This case illustrates the challenges of holding a docketing services provider liable for missed deadlines in the absence of a direct contractual relationship. While CPA’s data entry error was the root cause of the missed foreign filing deadlines, CPA escaped liability because it separated itself from the injured party and used contract terms to show that it did not intend for the inventor clients to rely on the information.
A few important lessons emerge:

  1.  Disclaimers of third-party liability in docketing services contracts can shield the provider from negligent misrepresentation claims by inventor clients. Patent firms should be aware of and factor in such limitations when engaging docketing vendors.
  2.  Patent firms cannot partially outsource responsibility for docketing. The onus remains on the firm to maintain its own docketing system and attorneys must verify the accuracy of any data entered by third-party contractors. FisherBroyles’ failure to catch CPA’s error for over two years was fatal to its client’s case.
  3.  To hold a docketing vendor liable for negligence, a patent firm may need to insist the vendor’s contract acknowledges the vendor’s work is intended to be relied upon by the firm’s clients. The contract should not disclaim third-party liability.
  4.  Although it is not clear here, FisherBroyles potentially has a negligence and breach of contract claim against CPA.
  5.  Clients should ask their patent firms what docketing redundancies are in place, but should also take steps to check the deadlines themselves.
What are your thoughts on this situation?

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Guest Post: Where Are the Patent Judge Shoppers Going?<https://patentlyo.us18.list-manage.com/track/click?u=4e7677578b82656a8e72dc1dc&id=21aacff779&e=a37a2adccd>
USPTO Fees: Targeted Higher Fees to Push for Compact<https://patentlyo.us18.list-manage.com/track/click?u=4e7677578b82656a8e72dc1dc&id=05097b0600&e=a37a2adccd>
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Dennis Crouch
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