[Federal Register Volume 89, Number 71 (Thursday, April 11, 2024)]
[Notices]
[Pages 25609-25617]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-07629]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2024-0013]


Guidance on Use of Artificial Intelligence-Based Tools in 
Practice Before the United States Patent and Trademark Office

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) issues 
this guidance to inform practitioners and the public of the important 
issues that patent and trademark professionals, innovators, and 
entrepreneurs must navigate while using Artificial Intelligence (AI) in 
matters before the USPTO. The USPTO recognizes the possibility that AI 
will be used to prepare and prosecute patent and trademark 
applications, as well as other filings before the Office including 
filings submitted to the Patent Trial and Appeal Board (PTAB) and 
Trademark Trial and Appeal Board (TTAB). 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. At this time, based on the USPTO's 
engagement with stakeholders through the USPTO's AI and Emerging 
Technologies (ET) Partnership (AI/ET Partnership) and a review of 
existing rules, the USPTO has determined that existing rules protect 
the USPTO's ecosystem against such potential perils. This guidance 
reminds individuals involved in proceedings before the USPTO of the 
pertinent rules and policies, helps inform those same individuals of 
the risks associated with the use of AI systems, and provides 
suggestions to mitigate those risks. The USPTO will continue to engage 
with the public, including through the AI/ET Partnership, as the use of 
AI advances and evolves.

DATES: This guidance on the use of AI in practicing before the USPTO is 
applicable as of April 11, 2024.

FOR FURTHER INFORMATION CONTACT: For patent matters contact Matthew 
Sked, Senior Legal Advisor, at 571-272-7627 or Nalini Mummalaneni, 
Senior Legal Advisor, at 571-270-1647, both with the Office of Patent 
Legal Administration, Office of the Deputy Commissioner for Patents.
    For matters regarding the PTAB contact Michael W. Kim, Vice Chief 
Administrative Patent Judge, or Charles J. Boudreau, Lead 
Administrative Patent Judge, at 571-272-9797.
    For trademark matters contact Robert J. Lavache, Senior Trademark 
Legal Policy Advisor, Office of the Deputy Commissioner for Trademark 
Examination Policy, at 571-272-5881.
    For matters regarding the TTAB contact Cheryl A. Butler, Senior 
Counsel and Editor of the Trademark Board Manual of Procedure, at 571-
272-4259.

SUPPLEMENTARY INFORMATION:

I. Background

    Recognizing that ``[r]esponsible AI use has the potential to help 
solve urgent challenges while making our world more prosperous, 
productive, innovative, and secure,'' while ``[a]t the same time, 
irresponsible use could exacerbate societal harms such as fraud, 
discrimination, bias, and disinformation; displace and disempower 
workers; stifle competition; and pose risks to national security,'' 
President Biden issued the Executive Order on the Safe, Secure, and 
Trustworthy Development and Use of Artificial Intelligence on October 
30, 2023 (``Executive Order'').\1\ The Executive Order calls upon the 
Federal Government to enact and enforce protections as to AI-related 
harms, including ``in critical fields like healthcare, financial 
services, education, housing, law, and transportation'' (emphasis 
added), while promoting responsible uses of AI.\2\ This notice, which 
recognizes the ways in which the USPTO's existing protections address 
AI-related harms, is one of the USPTO's numerous efforts, such as the 
AI/ET Partnership and the Inventorship Guidance on AI-Assisted 
Inventions,\3\ to address AI considerations at the intersection of 
innovation, creativity, and intellectual property (IP).
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    \1\ Executive Order 14110, 88 FR 75191 (November 1, 2023).
    \2\ Id at 75193.
    \3\ Events for the Artificial Intelligence and Emerging 
Technologies Partnership, 87 FR 34669 (June 7, 2022); Inventorship 
Guidance for AI-Assisted Inventions, 89 FR 10043 (February 13, 
2024).
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    As we see AI being increasingly integrated with and deployed into a 
variety of sectors including finance, manufacturing, healthcare, and 
transportation,\4\ we also see a growth in the use of AI in the legal 
field and in practice before the Office. With the advent of large 
language models and

[[Page 25610]]

generative AI, legal professionals and others who practice before the 
Office are currently exposed to AI-based solutions that can create 
content, author legal research memos, perform due diligence analysis, 
extract legal principles contained in court opinions, and assist in 
deposition preparation. The ability of AI to analyze massive amounts of 
data and find patterns that are undetectable to the human eye makes it 
a valuable asset in the toolkits of examiners, parties, and 
practitioners. For example, patent examiners are performing AI-enabled 
prior art searches using features like More Like This Document (MLTD) 
\5\ and Similarity Search \6\ in the Office's Patents End-to-End (PE2E) 
Search tool. 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.
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    \4\ ``Inventing AI--Tracing the diffusion of artificial 
intelligence with U.S. patents,'' (October 2020). Available at 
www.uspto.gov/sites/default/files/documents/OCE-DH-AI.pdf.
    \5\ See ``New PE2E Search Tool Using AI Search Features,'' 1494 
OG 251 (January 11, 2022).
    \6\ See ``New Artificial Intelligence Functionality in PE2E 
Search,'' 1504 OG 359 (November 15, 2022).
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    These tools have the potential to lower the barriers and costs of 
practicing before the Office as well as helping law practitioners offer 
services to their clients with improved quality and efficiency. As the 
use of AI continues to grow in the IP community, however, it is 
essential to address the legal and ethical considerations that arise 
with the use of these technologies. Some of these considerations were 
discussed in a panel on practitioners' use of AI at the AI/ET 
Partnership event, ``AI tools and data,'' held at the USPTO on 
September 27, 2023.\7\ Patent practitioners suggested that AI tools 
have the potential to make prior art searches, claim charting, and 
document reviews easier while acknowledging that human verification of 
the outputs of AI tools is necessary. They also discussed 
confidentiality and ethical issues that may be of concern when using 
such tools.
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    \7\ ``AI tools and data'' AI/ET Partnership Series #4, September 
2023 (recording available at https://www.uspto.gov/about-us/events/aiet-partnership-series-4-ai-tools-and-data).
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    Incomplete or inaccurate outputs by AI, which, when not thoroughly 
verified by parties and practitioners, can also result in critical 
misstatements and omissions. For example, legal briefs and motions, the 
preparation of which was assisted by AI, have included fictionalized 
citations and quotations, resulting in sanctions for the attorneys 
filing these briefs.\8\ Other issues arise from seeking AI assistance 
by sharing sensitive and confidential client information to third-party 
AI systems, including those potentially located outside of the United 
States.\9\
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    \8\ See OPINION AND ORDER ON SANCTIONS at 2, Mata v. Avianca 
Inc., Case No. 22-CV-1461 (S.D.N.Y., June 22, 2023) (lawyers 
sanctioned for filing a brief that included non-existent citations 
and quotations that were output by a generative AI system).
    \9\ See Panel Discussion on Practitioners' Evaluation and Use of 
AI, ``AI tools and data'' AI/ET Partnership Series #4, September 
2023 (recording available at https://www.uspto.gov/about-us/events/aiet-partnership-series-4-ai-tools-and-data).
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    The legal community has recognized the need to identify and explore 
AI risks in legal proceedings. For example, in the 2023 Year-End Report 
on the Federal Judiciary, Chief Justice Roberts identified that AI has 
the potential to ``increase access to key information for lawyers and 
non-lawyers alike'' but comes with risks such as ``invading privacy 
interests and dehumanizing the law.'' \10\ The American Bar Association 
(ABA) created the ABA Task Force on Law and Artificial Intelligence to 
provide the legal community with insights for developing and using AI 
in a trustworthy and responsible manner.\11\ Several federal and state 
court judges have issued standing orders requiring, for example, 
certifications by filers that any court filings, or citations, 
assertions, or analysis therein, generated by AI are verified to be 
accurate.\12\ Following the lead of these judges, courts are beginning 
to propose local rules to address such issues for all judges on those 
courts.\13\ Recognizing the importance of these issues, on February 6, 
2024, the USPTO Director issued guidance (``February 2024 Guidance'') 
to the PTAB and TTAB to remind those business units about the scope and 
applicability of existing rules.\14\
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    \10\ 2023 Year-End Report on the Federal Judiciary at 5, 
available at www.supremecourt.gov/publicinfo/year-end/2023year-endreport.pdf (Dec. 31. 2023).
    \11\ See ABA forms task force to study impact of artificial 
intelligence on the legal profession, American Bar Ass'n (Aug. 28, 
2023), https://www.americanbar.org/news/abanews/aba-news-archives/2023/08/aba-task-force-impact-of-ai/.
    \12\ See, e.g., Standing Order Re: Artificial Intelligence 
(``AI'') in Cases Assigned to Judge Baylson (E.D. Pa. June 6, 2023), 
available at www.paed.uscourts.gov/sites/paed/files/documents/locrules/standord/Standing%20Order%20Re%20Artificial%20Intelligence%206.6.pdf).
    \13\ Notice of Proposed Amendment to 5th Cir. R. 32.3, available 
at www.ca5.uscourts.gov/docs/default-source/default-document-library/public-comment-local-rule-32-3-and-form-6.
    \14\ The February 2024 Guidance is available at www.uspto.gov/sites/default/files/documents/directorguidance-aiuse-legalproceedings.pdf.
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    Given the uncertainties faced by practitioners in the use of AI 
tools, the USPTO publishes this guidance to remind practitioners about 
existing rules and policies that may be relevant to the use of these 
tools, and to help educate practitioners on possible risks presented by 
the use of these tools so that practitioners can mitigate these risks. 
In the event of any conflict between the February 2024 Guidance and 
this notice, this notice controls.
    This guidance is not intended to provide an exhaustive list of 
possible rules, policies, or issues that may arise with use of AI in 
matters before the USPTO. As noted above, the USPTO has separately 
addressed the use of AI before the office when AI is used as part of 
the inventive process.\15\ The USPTO continues to engage with 
stakeholders through the AI/ET Partnership to seek the public's views 
on various policy issues that uniquely affect the AI/ET community.\16\ 
The USPTO will continue to study considerations raised by the use of AI 
within the IP community, including impacts on the integrity and 
accessibility of the IP system.
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    \15\ Inventorship Guidance for AI-Assisted Inventions, 89 FR 
10043.
    \16\ www.uspto.gov/initiatives/artificial-intelligence/ai-and-emerging-technology-partnership-engagement-and-events. For more 
information on the USPTO's work at the intersection of AI and IP, 
see https://www.uspto.gov/blog/director/entry/ai-and-inventorship-guidance-incentivizing?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=.
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    This notice is organized as follows: Section II provides an 
overview of the USPTO's existing rules and policies. Section III 
describes how these existing rules and policies apply in the context of 
the use of AI tools in matters before the USPTO. Specifically, section 
III(A) discusses the use of AI systems in drafting documents for 
submission to the USPTO. Section III(B) addresses the filing of 
documents at the USPTO with the assistance of AI tools. Section III(C) 
discusses USPTO information technology (IT) systems and the appropriate 
use of AI tools in interacting with those systems. Finally, section 
III(D) raises confidentiality and national security concerns related to 
the use of AI systems.
    Disclaimer: This guidance does not constitute substantive 
rulemaking and does not have the force and effect of law. The guidance 
does not create any right or benefit, substantive or procedural, 
enforceable by any party against the USPTO. This guidance is not 
intended to announce any new USPTO practice or procedure and is meant 
to be consistent with current USPTO policy. However, if any earlier 
guidance from the USPTO, including any section of the current Manual of 
Patent Examining Procedure (MPEP), is inconsistent with the guidance 
set forth in this notice, USPTO personnel are to follow this

[[Page 25611]]

guidance. This guidance will be incorporated into the MPEP in due 
course.

II. The USPTO's Existing Rules and Policies

    The USPTO's rules and policies described in this guidance--
including those meant to ensure full, fair and accurate disclosure to 
the USPTO and to protect clients of USPTO practitioners--apply broadly, 
regardless of any AI assistance in preparing submissions to the USPTO. 
These broadly applicable rules and policies help mitigate the risks of 
AI assistance and require practitioners and others to exercise special 
care when using AI as a tool in connection with USPTO practice.

A. Duty of Candor and Good Faith

    Each individual associated with a proceeding at the USPTO (e.g., 
patent and trademark examination, reexamination, appeal or other 
proceedings before the PTAB or TTAB) has a duty of candor and good 
faith in dealing with the Office. For practitioners, these duties are 
detailed in 37 CFR 11.303 and apply to practice before the USPTO 
including any USPTO tribunal. Furthermore, other rules may act 
cumulatively to Sec.  11.303. In patent examination and reissue 
proceedings, for example, individuals owe the Office a duty of candor 
and good faith as detailed in 37 CFR 1.56(a), which states in part: 
``[e]ach individual associated with the filing and prosecution of a 
patent application has a duty of candor and good faith in dealing with 
the Office, which includes a duty to disclose to the Office all 
information known to that individual to be material to patentability as 
defined in this section.'' This duty extends to all dealings these 
individuals have with the USPTO and is not limited to representations 
or dealings with a patent examiner.\17\ Therefore, the duty of candor 
and good faith covers other interactions associated with a proceeding 
at the USPTO such as, without limitation, filing a petition to the 
USPTO Director or filing a response to a pre-examination notice from 
the Office of Patent Application Processing.
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    \17\ Manual of Patent Examining Procedure (9th Edition, rev. 
07.2022, February 2023) (MPEP) 2001.03.
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    Included within the duty of candor and good faith in patent 
proceedings is the duty of disclosure. The duty of disclosure requires 
that each individual identified in 37 CFR 1.56(c) disclose to the USPTO 
all information known to be material to patentability as defined in 37 
CFR 1.56(b). While Sec.  1.56(a) refers to the duty to disclose 
material information to the USPTO, the duty of candor and good faith is 
broader.\18\ The rule states ``no patent will be granted on an 
application in connection with which fraud on the Office was practiced 
or attempted or the duty of disclosure was violated through bad faith 
or intentional misconduct.'' The duty of candor and good faith applies 
to positions taken by applicants or parties involving the claimed 
subject matter.\19\ It also applies to errors that occur during the 
course of the proceeding. ``If a party to a USPTO proceeding discovers 
that an earlier position taken in a submission to the USPTO or another 
Government agency was incorrect or inconsistent with other statements 
made by the party, the party must promptly correct the record.'' \20\ 
Under the duty of candor and good faith, any acts of fraud and 
intentional misconduct are not permitted.
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    \18\ MPEP 2001.04.
    \19\ Id.
    \20\ Id (citing In re Tendler, Proceeding No. D2013-17 (USPTO 
Jan. 1, 2014) (suspending a practitioner for four years for failure 
to correct the written record after learning of inaccuracies in a 
declaration the practitioner had filed)); see also MPEP 2011 (``When 
an error is discovered, applicant should take steps to ensure that 
the error is corrected as soon as possible.'').
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    The duty of candor and good faith operates to achieve the important 
functions of safeguarding the integrity of proceedings before the USPTO 
and ensuring robust and reliable patents are issued. ``The rules serve 
to remind individuals associated with the preparation and prosecution 
of patent applications of their duty of candor and good faith in their 
dealings with the Office, and will aid the Office in receiving, in a 
timely manner, the information it needs to carry out effective and 
efficient examination of patent applications.'' \21\ Further, the duty 
also provides for the efficient resolution of matters by permitting the 
USPTO to accept certain applicant statements as true without further 
investigation.\22\ Those individuals subject to the duty of candor and 
good faith should exercise care to avoid any potential negative 
consequences.\23\
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    \21\ Id.
    \22\ See, e.g., MPEP 711.03(C) (``The Office usually relies upon 
the applicant's duty of candor and good faith and accepts the 
statement that `the entire delay in filing the required reply from 
the due date for the reply until the filing of a grantable petition 
pursuant to 37 CFR 1.137 was unintentional' without requiring 
further information in the vast majority of petitions under 37 CFR 
1.137.''); MPEP 717.02(b) (``The applicant(s) or the 
representative(s) of record have the best knowledge of the ownership 
of their application(s) and reference(s), and their statement of 
such is sufficient because of their paramount obligation of candor 
and good faith to the USPTO.'').
    \23\ See MPEP 2016.
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    The duty of candor and good faith in patent proceedings extends 
beyond ex parte patent examination and reissue proceedings. In 
reexamination proceedings and supplemental examination, 37 CFR 1.555(a) 
states: ``Each individual associated with the patent owner in a 
reexamination proceeding has a duty of candor and good faith in dealing 
with the Office, which includes a duty to disclose to the Office all 
information known to that individual to be material to patentability in 
a reexamination proceeding.'' When parties and individuals are involved 
in a proceeding before the PTAB, they are also subject to the duty of 
candor and good faith pursuant to 37 CFR 42.11. The duty of candor and 
good faith applies in patent term extension proceedings as well.\24\
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    \24\ 37 CFR 1.765(a) (``A duty of candor and good faith toward 
the Patent and Trademark Office and the Secretary of Health and 
Human Services or the Secretary of Agriculture rests on the patent 
owner or its agent, on each attorney or agent who represents the 
patent owner and on every other individual who is substantively 
involved on behalf of the patent owner in a patent term extension 
proceeding.'').
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    As the duty of candor and good faith applies to all conduct before 
the USPTO, the duty underlies all the discussions on the use of AI 
systems in matters before the USPTO throughout Section III. However, 
the duty is explicitly referenced in Section III(A). For example, this 
section explains that those involved in patent proceedings have a duty 
to disclose all information--including on the use of AI tools by 
inventors, parties, and practitioners--that is material to 
patentability.

B. Signature Requirement and Corresponding Certifications

    Generally, all patent correspondence filed in the USPTO must bear a 
person's signature.\25\ By including this signature, the individual 
inserting the signature or submitting the paper is certifying that the 
person's signature appearing on the document was actually inserted by 
that person.\26\ In other words, a person, including a practitioner, 
must insert their own signature on the paper. ``The requirement does 
not permit one person (e.g., a secretary) to type in the signature

[[Page 25612]]

of a second person (e.g., a practitioner) even if the second person 
directs the first person to do so.'' \27\
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    \25\ See 37 CFR 11.18(a); see also 37 CFR 1.33(b); 37 CFR 
42.6(a)(4) (``Signature; identification. Documents must be signed in 
accordance with Sec. Sec.  1.33 and 11.18(a) of this title, and 
should be identified by the trial number (where known).''); 37 CFR 
42.11(b) (``Every petition, response, written motion, and other 
paper filed in a [PTAB AIA Trial] proceeding must comply with the 
signature requirements set forth in Sec.  11.18(a) of this 
chapter.''). Certain patent-related correspondence, including a 
notice of appeal to the PTAB, are not subject to these signature 
requirements. See, e.g., 37 CFR 41.31(b).
    \26\ 37 CFR 1.4(d)(5)(ii).
    \27\ MPEP 502.02(subsection II).
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    Except for trademark correspondence that is required to be signed 
by the applicant, registrant or party to a proceeding, each piece of 
trademark correspondence filed in the Office by a trademark 
practitioner must bear a signature, personally signed or inserted by 
such practitioner.\28\ This signature may be: (1) a handwritten 
signature personally signed in permanent ink by the person named as the 
signatory, or a true copy thereof, or (2) an electronic signature on 
correspondence filed on paper or through the USPTO's electronic filing 
systems that meets the requirements of 37 CFR 2.193(c) and is 
personally entered by the person named as the signatory.
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    \28\ 37 CFR 11.18(a).
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    By signing or presenting a piece of correspondence,\29\ the party 
is making a certification under 37 CFR 11.18(b).\30\ That section is 
based upon and includes the same substantive requirements as Rule 11(b) 
of the Federal Rules of Civil Procedure (2007).\31\ Under 37 CFR 
11.18(b)(1), the party presenting the paper certifies that ``[a]ll 
statements made therein of the party's own knowledge are true, all 
statements made therein on information and belief are believed to be 
true, and all statements made therein are made with the knowledge that 
whoever, in any matter within the jurisdiction of the Office, knowingly 
and willfully falsifies, conceals, or covers up by any trick, scheme, 
or device a material fact, or knowingly and willfully makes any false, 
fictitious, or fraudulent statements or representations, or knowingly 
and willfully makes or uses any false writing or document knowing the 
same to contain any false, fictitious, or fraudulent statement or 
entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 
and any other applicable criminal statute, and violations of the 
provisions of this section may jeopardize the probative value of the 
paper.'' In addition to the certification under 37 CFR 11.18(b)(1), 37 
CFR 11.18(b)(2) imposes a duty of reasonable inquiry.\32\ This duty 
ensures that ``the paper is not being presented for any improper 
purpose, the legal contentions are warranted by law, the allegations 
and other factual contentions have evidentiary support, and the denials 
of factual contentions are warranted on the evidence.'' \33\ The 
existence and extent of this duty is based on the circumstances known 
to the party presenting the paper to the USPTO.\34\ Failure to inquire 
when the circumstances warrant it could result in sanctions or other 
appropriate action.\35\
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    \29\ Presenting a correspondence includes signing, filing, 
submitting, or later advocating. It is noted that while many of the 
rules of professional conduct are directed at practitioners, 37 CFR 
11.18 applies to anyone presenting a paper, including pro se 
applicants.
    \30\ 37 CFR 1.4(d)(5)(i); see also 37 CFR 42.11(c) (``By 
presenting to the Board a petition, response, written motion, or 
other paper--whether by signing, filing, submitting, or later 
advocating it--an attorney, registered practitioner, or 
unrepresented party attests to compliance with the certification 
requirements under Sec.  11.18(b)(2) of this chapter.'').
    \31\ MPEP 410.
    \32\ 37 CFR 11.18(b)(2) (``To the best of the party's knowledge, 
information and belief, formed after an inquiry reasonable under the 
circumstances, (i) The paper is not being presented for any improper 
purpose, such as to harass someone or to cause unnecessary delay or 
needless increase in the cost of any proceeding before the Office; 
(ii) The other legal contentions therein are warranted by existing 
law or by a nonfrivolous argument for the extension, modification, 
or reversal of existing law or the establishment of new law; (iii) 
The allegations and other factual contentions have evidentiary 
support or, if specifically so identified, are likely to have 
evidentiary support after a reasonable opportunity for further 
investigation or discovery; and (iv) The denials of factual 
contentions are warranted on the evidence, or if specifically so 
identified, are reasonably based on a lack of information or 
belief.'').
    \33\ MPEP 2002.02.
    \34\ MPEP 2001.06(e).
    \35\ See 37 CFR 11.18(c); 37 CFR 42.12.
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    As will be discussed in Section III(B), below, the signature 
requirement and corresponding certifications ensure that documents 
drafted with the assistance of AI systems have been reviewed by a 
person and that person believes everything in the document is true and 
not submitted for an improper purpose. This issue is more fully 
discussed in Section III(B).

C. Confidentiality of Information

    Under 37 CFR 11.106(a), ``[a] practitioner shall not reveal 
information relating to the representation of a client unless the 
client gives informed consent, the disclosure is impliedly authorized 
in order to carry out the representation, the disclosure is permitted 
by paragraph (b) of this section, or the disclosure is required by 
paragraph (c) of this section.'' This rule requires practitioners to 
maintain the confidentiality of client information except in limited 
circumstances. This rule was amended in 2021 to bring this provision 
into alignment with the 2012 amendments to the ABA Model Rule 1.6.\36\ 
In particular, 37 CFR 11.106(d) was added, which states: ``[a] 
practitioner shall make reasonable efforts to prevent the inadvertent 
or unauthorized disclosure of, or unauthorized access to, information 
relating to the representation of a client.'' Therefore, practitioners 
must take steps to maintain the confidentiality of their clients' 
information including reasonable steps to prevent inadvertent and 
unauthorized disclosure. In addition, the USPTO Rules of Professional 
Conduct concerning conflicts of interest generally prohibit a 
practitioner from using information relating to the representation of a 
client (or a former client) to the disadvantage of that client.\37\ Use 
of AI systems to perform prior art searches, application drafting, etc. 
may result in the inadvertent disclosure of client-sensitive or 
confidential information to third parties through the owners of these 
systems, causing harms to the client.
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    \36\ See ``Changes to Representation of Others Before the United 
States Patent and Trademark Office,'' 86 FR 28442 (May 26, 2021).
    \37\ See 37 CFR 11.107-109.
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    In light of these considerations, those using AI systems in 
practicing before the USPTO, such as drafting applications, should be 
cognizant of the risks and take steps to ensure confidential 
information is not divulged as discussed in Section III(D).

D. Foreign Filing Licenses and Export Regulations

    Patent practitioners must comply with foreign filing license 
requirements prior to filing any patent application in a foreign 
country or exporting technical data for purposes related to the 
preparation, filing or possible filing, and prosecution of a foreign 
application. In particular, under 37 CFR 5.11(a), ``[a] license from 
the Commissioner for Patents under 35 U.S.C. 184 \38\ is required 
before filing any application for patent . . . or for the registration 
of a utility model, industrial design, or model, in a foreign country 
or in a foreign or international intellectual property authority, . . . 
if the invention was made in the United States, and: (1) An application 
on the invention has been filed in the United States less than six 
months prior to the date on which

[[Page 25613]]

the application is to be filed; or (2) No application on the invention 
has been filed in the United States.'' Further, 37 CFR 5.11(b) provides 
that ``[t]he license from the Commissioner . . . referred to in 
paragraph (a) . . . would also authorize the export of technical data 
abroad for purposes related to . . . [t]he preparation, filing or 
possible filing, and prosecution of a foreign application.'' Under 37 
CFR 5.11(c), ``[w]here technical data in the form of a patent 
application, or in any form, are being exported for purposes related to 
the preparation, filing or possible filing and prosecution of a foreign 
application, without the license from the Commissioner for Patents 
referred to in paragraphs (a) or (b) of this section, or on an 
invention not made in the United States, the export regulations 
contained in 22 CFR parts 120 through 130 (International Traffic in 
Arms Regulations of the Department of State), 15 CFR parts 730 through 
774 (Export Administration Regulations of the Bureau of Industry and 
Security, Department of Commerce), and 10 CFR part 810 (Assistance to 
Foreign Atomic Energy Activities Regulations of the Department of 
Energy) must be complied with unless a license is not required because 
a United States application was on file at the time of export for at 
least six months without a secrecy order under Sec.  5.2 being placed 
thereon.''
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    \38\ See 35 U.S.C. 184(a) (``Filing in Foreign Country. Except 
when authorized by a license obtained from the Commissioner of 
Patents a person shall not file or cause or authorize to be filed in 
any foreign country prior to six months after filing in the United 
States an application for patent or for the registration of a 
utility model, industrial design, or model in respect of an 
invention made in this country. A license shall not be granted with 
respect to an invention subject to an order issued by the 
Commissioner of Patents pursuant to section 181 without the 
concurrence of the head of the departments and the chief officers of 
the agencies who caused the order to be issued. The license may be 
granted retroactively where an application has been filed abroad 
through error and the application does not disclose an invention 
within the scope of section 181.'').
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    Practitioners are further reminded, however, that ``[a] foreign 
filing license from the USPTO does not authorize the exporting of 
subject matter abroad for the preparation of patent applications to be 
filed in the United States.'' \39\ Rather, ``the export of subject 
matter abroad pursuant to a license from the USPTO, such as a foreign 
filing license, is limited to purposes related to the filing of foreign 
patent applications,'' and ``[a]pplicants who are considering exporting 
subject matter abroad for the preparation of patent applications to be 
filed in the United States should contact the Bureau of Industry and 
Security (BIS) at the Department of Commerce for the appropriate 
clearances.'' \40\ ``The BIS has promulgated the Export Administration 
Regulations (EAR) governing exports of dual-use commodities, software, 
and technology, including technical data, which are codified at 15 CFR 
parts 730 through 774.'' \41\ Release of controlled technology to a 
foreign person may be deemed an export. 15 CFR 734.13(b).\42\
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    \39\ Scope of Foreign Filing Licenses, 73 FR 42781 (July 23, 
2008) (citing MPEP 140 (8th ed., Rev. 5, Aug. 2006)); See also MPEP 
140 (``Note that the export of subject matter abroad for purposes 
not related to foreign filing of a patent application or a 
registration of an industrial design, such as preparing an 
application in a foreign country for subsequent filing in the USPTO 
is not covered by any license from the USPTO.'').
    \40\ Id.
    \41\ Id.
    \42\ See, e.g., ``Legal Framework for Patent Electronic System'' 
at 28 (October 23, 2019) (available at www.uspto.gov/sites/default/files/documents/2019LegalFrameworkPES.pdf) (``A sponsoring 
practitioner must take reasonable steps to ensure compliance by each 
sponsored practitioner support person with . . . the restrictions on 
the export (including deemed export) of technology and software 
included in patent applications in section 7. If a sponsored 
practitioner support person is not a U.S. citizen, their access to 
the technology and software constitutes an export.'').
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    Practitioners must be mindful of these concerns and ensure data is 
not improperly exported when using AI systems as discussed in Section 
III(D).

E. USPTO Electronic Systems' Policies

    In addition to the requirements set forth above, access to USPTO 
electronic systems is subject to a number of terms and conditions. 
Exceeding authorized access or violating those terms and conditions in 
connection with accessing USPTO electronic systems may result in 
criminal or civil liability under federal law (including the Computer 
Fraud and Abuse Act, 18 U.S.C. 1030) and/or state law. In addition, 
such conduct may result in penalties or sanctions administered by the 
USPTO.
    The USPTO's websites provide access to a rich collection of 
information and services including online filing for patents and 
trademarks, fee handling, and search. Some of these services may 
require the user to create and use a dedicated account. For example, 
users may use the USPTO patent electronic filing system, Patent Center, 
to electronically file patent correspondence or view the status of, and 
documents filed in or associated with, patent applications and 
proceedings, including appeals to the PTAB with respect to such 
applications. In order to take advantage of all the capabilities of 
Patent Center, a user must be a registered user by creating a USPTO.gov 
account and completing the Patent Electronic System Verification Form 
PTO-2042a including the Patent Electronic Subscriber agreement.\43\ The 
USPTO.gov account is exclusive to an individual and it is not permitted 
to be shared with other users. Even support staff individuals who are 
sponsored by one or more practitioners must create and use their own 
individual USPTO.gov account. Likewise, users are required to have an 
active USPTO.gov account in order to access the USPTO's Patent Trial 
and Appeal Case Tracking System (P-TACTS) for filing documents in 
connection with interferences \44\ and inter partes disputes \45\ 
established under the Leahy-Smith America Invents Act (AIA), including 
inter partes review (IPR), transitional program for covered business 
method patents (CBM), post grant review (PGR), and derivation (DER) 
proceedings.\46\
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    \43\ See MPEP 502.05.
    \44\ https://ptacts.uspto.gov/interferences/ui/home.
    \45\ https://ptacts.uspto.gov/ptacts/ui/home.
    \46\ See https://www.uspto.gov/patents/ptab/patent-trial-and-appeal-case-tracking-system-p-tacts.
_____________________________________-

    Similarly, trademark applicants and registrants are required to 
electronically file trademark correspondence through the trademark 
electronic filing systems. Users can view the status of, and documents 
filed in or associated with, trademark applications and registrations 
in the trademark electronic filing systems. In order to take advantage 
of all trademark electronic systems, a user must be a registered user 
by creating a USPTO.gov account and completing an online or paper-based 
verification including the Trademark Verified USPTO.gov Account 
Agreement.\47\ The USPTO.gov account is exclusive to an individual and 
it is not permitted to be shared with other users.\48\ Even support 
staff individuals who are sponsored by one or more practitioners must 
create and use their own individual USPTO.gov account.\49\
---------------------------------------------------------------------------

    \47\ ``United States Patent and Trademark Office Trademark 
Verified USPTO.gov Account Agreement'' (October 2023) (available at 
https://www.uspto.gov/sites/default/files/documents/TM-verified-account-agreement.pdf).
    \48\ Id.
    \49\ Id.
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    Trademark applicants, registrants, and parties to a proceeding 
before the TTAB are required to file submissions and correspondence 
electronically, currently through Electronic System for Trademark 
Trials and Appeals (ESTTA). 37 CFR 2.126(a).\50\
---------------------------------------------------------------------------

    \50\ See also TTAB Manual of Procedure (TBMP) section 110.01.
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    Additionally, the Terms of Use apply to all USPTO websites, 
applications, software, and services that are intended for public use 
on the USPTO.gov domain or USPTO-branded mobile applications and social 
media presences.\51\ In other words, the Terms of Use are the policies 
that all users must abide by when accessing USPTO services. These Terms 
of Use prohibit the unauthorized access, actions, use, modification, or 
disclosure of the data contained in the USPTO system or in transit to/
from the system.
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    \51\ Terms of Use for USPTO websites (available at https://www.uspto.gov/terms-use-uspto-websites).

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[[Page 25614]]

    Further information on USPTO's electronic system policies and how 
they relate to the use of AI systems in filing documents and accessing 
USPTO systems can be found in Sections III(B) and (C).

F. Duties Owed to Clients

    The USPTO Rules of Professional Conduct require that a practitioner 
provide competent and diligent representation to a client.\52\ The 
USPTO adopted the competence and diligence rules in 2013 to correspond 
to ABA Model Rules 1.1 and 1.3, respectively, and guided practitioners 
to refer to the Comments and Annotations to the ABA Model Rules, as 
amended through August 2012, for useful information on how to interpret 
the equivalent USPTO Rules.\53\ Under 37 CFR 11.101, a practitioner 
must have ``the legal, scientific, and technical knowledge, skill, 
thoroughness and preparation reasonably necessary for the 
representation.'' \54\ Practitioners must keep abreast of the benefits 
and risks associated with any technology used to handle client matters 
before the USPTO.\55\ The diligence requirement, which corresponds to 
ABA Model Rule 1.3, states that the practitioner shall act with 
reasonable diligence in representing a client.\56\
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    \52\ See 37 CFR 11.101, 11.103.
    \53\ See Changes to Representation of Others Before The United 
States Patent and Trademark Office, 78 FR 28445 (2013).
    \54\ 37 CFR 11.101.
    \55\ See Model Code of Prof'l Conduct r. 1.1, cmt. (Am. Bar 
Ass'n 2012) (``To maintain the requisite knowledge and skill, a 
lawyer should keep abreast of changes in the law and its practice, 
including the benefits and risks associated with relevant technology 
. . .'').
    \56\ See 37 CFR 11.103.
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    In addition, 37 CFR 11.104 requires a practitioner to ``reasonably 
consult with the client about the means by which the client's 
objectives are to be accomplished'' and ``explain a matter to the 
extent reasonably necessary to permit the client to make informed 
decisions regarding the representation.'' A practitioner who supervises 
the work of other practitioners and non-practitioner assistants in 
representing a client is responsible for making reasonable efforts to 
ensure that the practitioners and non-practitioner assistants comply 
with the professional obligations of the practitioner or the USPTO 
Rules of Professional Conduct.\57\
---------------------------------------------------------------------------

    \57\ See 37 CFR 11.501-503.
---------------------------------------------------------------------------

    When using AI tools, practitioners must ensure they are not 
violating the duties owed to clients as highlighted in Section III(A). 
For example, practitioners must have the requisite legal, scientific, 
and technical knowledge to reasonably represent their client.

III. Application of the Existing Rules as to the Use of AI, Including 
Generative AI, Before the USPTO

    As set forth above, parties and practitioners appearing or 
practicing before the USPTO (including the PTAB and TTAB), or accessing 
USPTO electronic resources, are subject to a number of conditions and 
obligations. Those conditions and obligations readily apply to 
situations in which the party or practitioner uses AI as a tool, as set 
forth in the examples below.

A. The Use of Computer Tools for Document Drafting

    For years, computer tools have been ubiquitous in document 
drafting. Word processing software with features such as spelling and 
grammar check are commonplace in most industries. More recently, word 
processing software and other computer tools have begun adopting 
generative AI features that can develop a written document with much 
less human involvement. 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.
    The capabilities of these tools continue to grow, and there is no 
prohibition against using these computer tools in drafting documents 
for submission to the USPTO. Nor is there a general obligation to 
disclose to the USPTO the use of such tools.\58\ However, and 
especially absent such an obligation, applicants, registrants, 
practitioners, parties to proceedings, and others submitting papers to 
the USPTO are reminded of the related USPTO policies and duties to the 
Office and clients (if applicable) when using these computer tools. 
These policies and duties apply in a variety of exemplary contexts.
---------------------------------------------------------------------------

    \58\ A duty to disclose the use of such tools is implicated when 
the use rises to the level of materiality under 37 CFR 1.56(b).
---------------------------------------------------------------------------

1. All Submissions and Correspondence With the USPTO
    As explained above, nearly all forms of correspondence with the 
USPTO must be signed. This includes documents that were drafted 
entirely by AI tools or drafted with the assistance of AI tools. By 
presenting to the Office (whether by signing, filing, submitting, or 
later advocating) any paper, a party (i.e., the person signing, filing, 
submitting, or later advocating for the paper) certifies under 37 CFR 
11.18(b) that all statements to the party's own knowledge are true and 
that the party performed an inquiry reasonable under the circumstances. 
In order to obtain the knowledge necessary to make these 
certifications, the party presenting the paper must have reviewed and 
verified the paper and its contents.
    Accordingly, any paper submitted to the USPTO must be reviewed by 
the party or parties presenting the paper. Those parties are 
responsible for the contents therein. Simply relying on the accuracy of 
an AI tool is not a reasonable inquiry.\59\ Therefore, 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'' \60\ 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 nonfrivolous argument for the extension of existing 
law, or the establishment of new law. For example, if an AI system is 
used to draft a portion of a response to an examiner Office action, the 
party should review the response, including checking the accuracy of 
the citations and ensuring the arguments are legally warranted. 
Further, practitioners and others involved in a matter before the USPTO 
may be required to disclose certain known facts to the USPTO under 
their duty of candor and good faith. For example, in patents and patent 
applications, all patent claims must have a significant contribution by 
a human inventor. Thus, if an AI system is used to draft patent claims 
that are submitted for examination, but an individual listed in 37 CFR 
1.56(c) has knowledge that one or more of the claims did not have a 
significant contribution by a human inventor, that

[[Page 25615]]

information must be disclosed to the USPTO.\61\
---------------------------------------------------------------------------

    \59\ See Opinion and Order on Sanctions at 2, Mata v. Avianca 
Inc., Case No. 22-CV-1461 (S.D.N.Y., July 7, 2023).
    \60\ An AI hallucination, or sometimes referred to as 
``confabulation,'' is a phenomenon where the AI tool outputs 
inaccurate or nonexistent information.
    \61\ 37 CFR 1.56(a); See also Inventorship Guidance for AI-
Assisted Inventions, 89 FR at 10049.
---------------------------------------------------------------------------

    Upon review of the document drafted with the assistance of an AI 
tool, any errors or omissions in the document must be corrected. Filing 
a paper with the USPTO that includes erroneous facts, arguments, or 
authorities would not be in compliance with 37 CFR 11.18(b). Similarly, 
filing a paper with known material omissions in not accordance with the 
duty of candor and good faith. Violations of 37 CFR 11.18 could include 
striking the offending paper, referring the practitioner's conduct to 
the Director of the Office of Enrollment and Discipline, or terminating 
the proceedings in the Office.\62\ Additionally, practitioners are 
prohibited under 37 CFR 11.301 \63\ from bringing or defending a 
proceeding, or asserting or controverting an issue therein, unless 
there is a basis in law or fact for doing so.\64\
---------------------------------------------------------------------------

    \62\ See 37 CFR 11.18(c).
    \63\ ``A practitioner shall not bring or defend a proceeding, or 
assert or controvert an issue therein, unless there is a basis in 
law and fact for doing so that is not frivolous, which includes a 
good-faith argument for an extension, modification or reversal of 
existing law.''
    \64\ See also 37 CFR 11.303(a).
---------------------------------------------------------------------------

    While those parties presenting a paper to the USPTO are under a 
duty to review the information in the paper and correct any errors, 
there is not presently a general duty to inform the USPTO that an AI 
tool was used in the drafting of the paper unless specifically 
requested by the USPTO.\65\ However, practitioners must competently 
represent their clients.\66\ That is, they must have the requisite 
legal, scientific, and technical knowledge to reasonably represent 
their client.
---------------------------------------------------------------------------

    \65\ See, e.g., 37 CFR 1.105, 11.52.
    \66\ See 37 CFR 11.101.
---------------------------------------------------------------------------

    In addition, under 37 CFR 11.104(a)(2), practitioners must 
reasonably consult with the client about the means by which their 
clients' objectives are to be accomplished.\67\
---------------------------------------------------------------------------

    \67\ 37 CFR 11.102(a) (``Subject to paragraphs (c) and (d) of 
this section, a practitioner shall abide by a client's decisions 
concerning the objectives of representation and, as required by 
Sec.  11.104, shall consult with the client as to the means by which 
they are to be pursued. A practitioner may take such action on 
behalf of the client as is impliedly authorized to carry out the 
representation. A practitioner shall abide by a client's decision 
whether to settle a matter.'').
---------------------------------------------------------------------------

2. Additional Examples in the Patent Context
    While there is no per se requirement to notify the USPTO when AI 
tools are used in the invention creation process or practicing before 
the USPTO, applicants and practitioners should be mindful of their duty 
of disclosure. This is, if the use of an AI tool is material to 
patentability as defined in 37 CFR 1.56(b), the use of such AI tool 
must be disclosed to the USPTO. For example, as discussed in more 
detail in the Inventorship Guidance for AI-Assisted Inventions, 
material information could include evidence that a named inventor did 
not significantly contribute to the invention because the person's 
purported contributions were made by an AI system.\68\ This could occur 
where an AI system assists in the drafting of the patent application 
and introduces alternative embodiments which the inventor(s) did not 
conceive and applicant seeks to patent. If there is a question as to 
whether there was at least one named inventor who significantly 
contributed to a claimed invention developed with the assistance of AI, 
information regarding the interaction with the AI system (e.g., the 
inputs/outputs of the AI system) could be material and, if so, should 
be submitted to the USPTO.\69\
---------------------------------------------------------------------------

    \68\ Inventorship Guidance for AI-Assisted Inventions, 89 FR at 
10049.
    \69\ MPEP 2004 (citing U.S. Industries v. Norton Co., 210 USPQ 
94, 107 (N.D. N.Y. 1980)) (``[i]n short, the question of relevancy 
in close cases, should be left to the examiner and not the 
applicant.''). (emphasis added)
---------------------------------------------------------------------------

    Practitioners are also under a duty to refrain from filing or 
prosecuting patent claims that are known to be unpatentable. Therefore, 
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. In 
situations where the specification and/or drawings of the patent 
application are drafted using AI tools, practitioners need to take 
extra care to verify the technical accuracy of the documents and 
compliance with 35 U.S.C. 112. Also, when AI tools are used to produce 
or draft prophetic examples, appropriate care should be taken to assist 
the readers in differentiating these examples from actual working 
examples.\70\ This should be done before initial filing with the USPTO 
because amending the specification and/or drawings after the initial 
submission may constitute new matter.\71\ Care should be taken to 
ensure that the disclosures of foreign or international patent 
applications drafted using AI tools, to which the U.S. patent 
application claims priority, are technically accurate to avoid loss of 
priority due to the filing of amendments to correct technical errors in 
the U.S. application.
---------------------------------------------------------------------------

    \70\ See MPEP 2164.02 (``The claims should be drafted in a 
manner that assists readers in differentiating between actual 
working examples and prophetic examples (i.e., prophetic examples 
should not be described using the past tense, but rather in future 
or present tense)''); MPEP 2004 (item 8).
    \71\ See MPEP 608.04(a).
---------------------------------------------------------------------------

    When AI systems are relied upon to draft or modify claims, such 
drafts or changes could impact inventorship or patentability (e.g., 35 
U.S.C. 112(a)). For example, when AI makes contributions to drafting 
portions of the specification and/or claims (e.g., introducing 
alternate embodiments not contemplated by the inventor(s)), it is 
appropriate to assess whether the contributions made by natural persons 
rise to the level of inventorship, in accordance with the law and 
recent USPTO guidance.\72\ In particular, each named inventor must have 
significantly contributed to a claimed invention of the application as 
described by the Pannu factors.\73\ Therefore, practitioners should 
carefully reevaluate that the appropriate inventors are listed on the 
patent application. It is particularly important for a practitioner to 
review applications prepared with the assistance of AI, before filing, 
to see that information is not incorrectly or incompletely 
characterized.
---------------------------------------------------------------------------

    \72\ Inventorship Guidance for AI-Assisted Inventions, 89 FR 
10043.
    \73\ Id at 10047.
---------------------------------------------------------------------------

    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.
    Additionally, AI may be used to automatically populate the USPTO's 
PTO/SB/08 form (Information Disclosure Statement (IDS) form) with 
citations for submission to the USPTO, and may be used to collect prior 
art references in the first place.\74\ While AI could be attractive to 
some patent applicants and practitioners, the unchecked use of AI poses 
the danger of increasing the number and size of IDS submissions to the 
USPTO, which could

[[Page 25616]]

burden the Office with large numbers of cumulative and irrelevant 
submissions. First, 37 CFR 1.4(d) requires a natural person to 
personally sign or insert their signature on the IDS. By signing, that 
person 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). After the contents have been reviewed, clearly 
irrelevant and marginally pertinent cumulative information to the 
instant proceeding should be removed to avoid violating 37 CFR 11.18 by 
overburdening the examiner with a large amount of irrelevant 
information.\75\ Including such information in an IDS could be 
construed as a paper presented for an improper purpose because it could 
``cause unnecessary delay or needless increase in the cost of any 
proceeding before the Office.'' \76\ Similarly, third-party preissuance 
submissions under 37 CFR 1.290 must also be signed by a natural person 
and, therefore, implicate the certifications under 37 CFR 11.18(b).
---------------------------------------------------------------------------

    \74\ See e.g., Juristat IDS, available at 
www.resources.juristat.com/information-disclosure-statement; 
ClaimMaster, available at www.patentclaimmaster.com/blog/filling-out-ids-forms-with-claimmaster.
    \75\ See MPEP 2004 (advising parties to ``[e]liminate clearly 
irrelevant and marginally pertinent cumulative information'').
    \76\ 37 CFR 11.18(b)(2)(i).
---------------------------------------------------------------------------

    The duty of disclosure applies to the individuals identified in 37 
CFR 1.56(c). This duty cannot be transferred to another person or a 
computer system such as an AI tool. Therefore, it is the Sec.  1.56(c) 
individuals who must ensure that all material information is submitted 
to the USPTO. Therefore, IDSs should also be reviewed to ensure that 
all material information is disclosed to prevent material information 
from being unknowingly omitted.
3. Additional Examples in the Trademark Context
    Trademark and TTAB submissions generated or assisted by AI must be 
carefully reviewed prior to filing to ensure that the facts and 
statements provided are true and have appropriate evidentiary support, 
consistent with the requirements of 37 CFR 11.18(b). This includes any 
information or evidence provided in trademark applications, 
registration maintenance filings, and TTAB proceedings, as well as 
legal arguments and citations made in response to refusals and 
requirements in Office actions or in briefs before the TTAB, whether in 
appeals or trial cases. Particular care should be taken to avoid 
submitting any AI-generated specimens, which do not show actual use of 
the trademark in commerce, or any other evidence created by AI that 
does not actually exist in the marketplace. In addition, AI-generated 
material that misstates facts or law, includes irrelevant material, or 
includes unnecessarily cumulative material, could be construed as a 
paper presented for an improper purpose because it could ``cause 
unnecessary delay or needless increase in the cost of any proceeding 
before the Office.'' \77\
---------------------------------------------------------------------------

    \77\ 37 CFR 11.18(b)(2)(i) and (iii).
---------------------------------------------------------------------------

B. Filing Documents With the USPTO

    Beyond assisting with the preparation of documents, AI tools could 
be used to assist or automate the mechanical aspects of filing 
documents with the USPTO. For example, these tools could potentially 
autocomplete USPTO forms, access information on USPTO websites, and 
upload documents and other information to USPTO servers. Care should be 
taken by persons using such tools to ensure USPTO rules and policies 
are not violated.
    As previously explained, nearly all forms of correspondence filed 
with the USPTO must bear a signature.\78\ This must be the signature of 
a ``person.'' \79\ It would not be acceptable for the correspondence to 
have the signature of an AI tool or other non-natural person.\80\ The 
signer must insert their signature in accordance with 37 CFR 1.4(d) and 
2.193(c).\81\ The signer of the document cannot delegate this act to 
another person or entity. Thus, it is not compliant with the rules to 
have the AI tool apply the signature of a person without being 
personally entered by that person.\82\ This requirement ensures that 
natural persons are overseeing the submissions to the USPTO and 
ensuring they are compliant with USPTO rules and policies.
---------------------------------------------------------------------------

    \78\ 37 CFR 1.4(d)(1) and 2.193(a).
    \79\ Id.; see also 37 CFR 11.18(a) (``For all documents filed in 
the Office in patent, trademark, and other non-patent matters, and 
all documents filed with a hearing officer in a disciplinary 
proceeding, except for correspondence that is required to be signed 
by the applicant or party, each piece of correspondence filed by a 
practitioner in the Office must bear a signature, personally signed 
or inserted by such practitioner, in compliance with Sec.  1.4(d) or 
Sec.  2.193(a) of this chapter.'').
    \80\ ``Non-natural person'' used herein refers to those entities 
who would not qualify as a natural person under the law (e.g. 
sovereigns, corporations, or machines).
    \81\ See, e.g., MPEP 502.02; TMEP 611.
    \82\ 37 CFR 1.4(d)(2)(i).
---------------------------------------------------------------------------

    Another issue practitioners and others should consider when using 
AI tools to submit papers to the USPTO is the USPTO's policies 
regarding electronic filing, websites, and other services. For example, 
in order to submit papers to the USPTO through the Patent Center, 
Trademark Electronic Application System (TEAS), P-TACTS, or other USPTO 
electronic systems, a user should obtain a USPTO.gov account.\83\ 
Because obtaining a USPTO.gov account requires individual agreement to 
the Terms of Use for USPTO websites, the USPTO Patent Electronic System 
Subscriber Agreement (as applicable), and the Trademark Verified 
USPTO.gov Account Agreement (as applicable), USPTO.gov accounts are 
limited to natural persons and cannot be obtained by non-natural 
persons. Therefore, AI systems may not obtain a USPTO.gov account. 
Further, practitioners may not sponsor AI tools as a support staff 
individual to obtain an account.
---------------------------------------------------------------------------

    \83\ Some submissions, such as an initial filed patent 
application, do not require a USPTO.gov account.
---------------------------------------------------------------------------

C. Accessing USPTO IT Systems

    While AI tools have the capabilities to access and interact with 
USPTO IT systems, attention should be paid to ensure the use of these 
tools does not run afoul of federal and state law, and USPTO 
regulations and policies. One important policy to note is the 
requirement that users must not file documents or access information 
for which they do not have authorization.\84\ In order to be 
authorized, a user must be the applicant, registrant, party to a 
proceeding, inventor, third party (who may submit some papers such as 
third-party submissions via a dedicated interface), a practitioner of 
record, a practitioner acting in representative capacity pursuant to 37 
CFR 1.34, or a sponsored support staff individual.\85\ Further, in 
addition to being authorized, only registered users may file follow-on 
documents in applications. An AI system or tool is not considered a 
``user'' for filing and/or accessing documents via the USPTO's 
electronic filing systems, and as such, cannot obtain a USPTO.gov 
account. If a person is using a computer tool, including an AI system, 
to assist in submitting documentation to the USPTO, that person is 
responsible for ensuring that computer tool does not exceed

[[Page 25617]]

authorized access, including submitting or accessing papers in an 
application that the person does not have authorization to access. 
Violations of the Legal Framework for Patent Electronic System, 
Trademark Verified USPTO.gov Account Agreement, Terms of Use for USPTO 
websites, or other applicable policies may lead to revocation of the 
user's USPTO.gov account, in addition to criminal, civil, and/or 
administrative action and penalties as previously described.\86\
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    \84\ Legal Framework for Patents Electronic Systems at 6 (``No 
user, whether registered or unregistered, is permitted to file 
documents in applications, reexamination proceedings, or 
supplemental examination proceedings in which they are not 
authorized.''); Trademark Verified USPTO.gov Account Agreement at 2 
(``I understand that my use of a trademark verified USPTO.gov 
account is . . . further limited to use in connection with 
applications and/or registrations I am authorized to access. I 
understand that any other use is strictly prohibited.'').
    \85\ See, e.g., Legal Framework for Patents Electronic Systems 
at 2, 6, and 26.
    \86\ Id at 28; Trademark Verified USPTO.gov Account Agreement at 
7-8; Terms of Use for USPTO websites.
---------------------------------------------------------------------------

    Users should also be extremely careful when attempting to data mine 
information from USPTO databases. Using computer tools, including AI 
systems, in a manner that generates unusually high numbers of database 
accesses violates the Terms of Use for USPTO websites, and users using 
tools in this way will be denied access to USPTO servers without notice 
and could be subject to applicable state criminal and civil laws.\87\ 
Instead, users should consider using the USPTO's bulk data products for 
permitted and appropriate data mining efforts.\88\
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    \87\ Terms of Use for USPTO websites.
    \88\ Available at www.uspto.gov/learning-and-resources/bulk-data-products.
---------------------------------------------------------------------------

D. Confidentiality and National Security Considerations

    Use of AI in practice before the USPTO can result in the 
inadvertent disclosure of client-sensitive or confidential information, 
including highly-sensitive technical information, to third parties. 
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. AI systems may 
retain the information that is entered by users. This information can 
be used in a variety of ways by the owner of the AI system including 
using the data to further train its AI models or providing the data to 
third parties in breach of practitioners' confidentiality obligations 
to their clients under, inter alia, 37 CFR 11.106. If confidential 
information is used to train AI, that confidential information or some 
parts of it may filter into outputs from the AI system provided to 
others.
    When practitioners rely on the services of a third party to develop 
a proprietary AI tool, store client data on third-party storage, or 
purchase a commercially available AI tool, practitioners must be 
especially vigilant to ensure that confidentiality of client data is 
maintained. Practitioners who supervise the work of other practitioners 
and non-practitioner assistants must ensure that the practitioners and 
staff under their supervision comply with the USPTO Rules of 
Professional Conduct when relying on AI tools and/or AI-related third 
party services.\89\
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    \89\ See 37 CFR 11.501-503.
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    Such disclosures can also implicate national security, export 
control, and foreign filing license issues.\90\ Specifically, 
practitioners must be mindful of the possibility 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. Even if the servers are located within the United States, 
certain activities related to the use of AI systems hosted by these 
servers by non-U.S. persons may be deemed an export subject to these 
regulations.\91\ Moreover, AI system developers or maintainers may 
suffer data breaches, further subjecting user data to disclosure risks. 
Therefore, before using these AI tools, it is imperative for 
practitioners to understand an AI tool's terms of use, privacy 
policies, and cybersecurity practices.
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    \90\ See, e.g., 37 CFR 5.11; Scope of Foreign Filing Licenses, 
73 FR 42781 (July 23, 2008); Bureau of Industry and Security Online 
Training Room (available at www.bis.doc.gov/index.php/online-training-room).
    \91\ See, e.g., 15 CFR 734.13.
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E. Fraud and Intentional Misconduct

    The USPTO does not tolerate fraud or intentional misconduct in any 
manner in a proceeding before the Office or in connection with 
accessing USPTO IT systems. As explained above, all individuals 
associated with a proceeding before the USPTO have a duty of candor and 
good faith. The duty extends not only to the personal actions of these 
individuals, but also to the actions these individuals take with any 
automated tools, including AI tools. Additionally, the use of AI tools 
on USPTO websites for the ``[u]nauthorized access, actions, use, 
modification, or disclosure of the data contained herein or in transit 
to/from [USPTO web systems] constitutes a violation of the Computer 
Fraud and Abuse Act.'' \92\ The USPTO monitors network traffic to 
identify such behaviors. As previously discussed, violators are subject 
to criminal, civil, and/or administrative action and penalties.
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    \92\ Terms of Use for USPTO websites.
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IV. Conclusion

    This guidance on the use of AI Before the Office is not meant to be 
exhaustive. Those appearing before the USPTO or accessing its systems 
are reminded to comply with the laws, regulations, precedent, and 
guidance in force at the time of their dealings with the USPTO.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-07629 Filed 4-10-24; 8:45 am]
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