Patent AI Notice Spurs Concerns of Dueling Disclosure Priorities

New guidance on the use of artificial intelligence tools in the patenting process may push applicants to limit certain information and increase clients’ risk of having patents invalidated down the road, attorneys said.

A US Patent and Trademark Office notice warned attorneys about AI’s potential to burden examiners by overpopulating patent application disclosures with irrelevant material. Those information disclosure statements include references to prior art—evidence showing an invention is already known—and heavily influence whether applicants’ submissions are deemed patentable.

Intellectual property attorneys acknowledged there’s a risk of excessive citations overloading examiners, but they said leaving out relevant prior art references would create more opportunities for challenges to their clients’ patents later.

While there could be scenarios where an applicant uses AI to generate an excessive IDS with 2,000 references, the PTO should handle them on a “case by case basis,” said Michael Borella, a partner at McDonnell Boehnen Hulbert & Berghoff LLP.

“They shouldn’t be trying to incentivize us to do things that might hurt our clients,” Borella said.

Disclosure Guidelines

The guidance published in the Federal Register last Thursday detailed how existing PTO rules apply to the use of AI tools in drafting documents, including applications and responses to examiner actions.

It came several weeks after publication of the patent office’s proposed rulemaking advancing fee changes, among them new fees for disclosure statements based on the number of items they contain. The PTO proposed a new $200 fee for disclosures with 51 to 100 items, a $500 fee for between 101 and 200 items, and an $800 fee for any submission with more than 200 items.

Dennis Crouch, an IP law professor at the University of Missouri, described the PTO’s guidance as a “wet blanket,” saying it appeared to encourage citing fewer examples of prior art in patent applications.

“This approach is backwards, especially when coupled with the new IDS fees,” he wrote in an April 10 blog post. “The biggest reason is that the USPTO examiner is better off with having more prior art than less prior art.”

The average number of submitted references is fewer than 50, said Raghav Bajaj, a partner at Haynes Boone LLP, though the number varies depending on the technology of the patent. Each individual reference could affect future challenges to a patent, he said.

“If a particular piece of prior art was cited during prosecution, that can affect whether the patent gets reviewed or not,” Bajaj said.

“The unchecked use of AI poses the risk of applicants including irrelevant information in their IDSs that could cause unnecessary delays or needless increases in the cost of any proceeding before our Office,” the PTO said in a comment to Bloomberg Law.

The notice remind practitioners of their duty to review IDSs before signing and submitting them, the office said, which exists irrespective of whether AI is used. The agency said it’s eager to work with applicants and will continue to hear all feedback, including at a webniar on AI next month.

AI References

PTO examiners are performing AI-enabled prior art searches, and the office acknowledged practitioners’ increasing reliance on AI tools to review decades of technological history.

“These tools can be amazing for generating very large numbers of prior art references, and that isn’t necessarily a bad thing,” said Mauricio Uribe, a partner at Knobbe, Martens, Olson & Bear LLP.

In addition to collecting references for applications, the guidance said AI can be used to automatically populate disclosure forms with citations. It even cited an existing AI tool, ClaimMaster, that offers software to fill out the forms.

Attorneys have a duty of disclosure and must certify each piece of evidence submitted in an application is accurate and relevant, according to the PTO, which could help avoid overburdening examiners with irrelevant information. That certification cannot be turned over to AI tools, the guidance said.

The agency’s concerns about AI are legitimate, Uribe said, referencing the New York lawyers who became infamous after submitting a brief with nonexistent cases created by ChatGPT.

“You don’t want to be the same thing with an IDS,” submitting prior art that turns out to be irrelevant or fake, he said.

Others, though, took issue with the disclosure statement portion of the guidance.

Borella suggested it might exacerbate tension between courts and the PTO over attorneys’ duty to disclose information affecting patentability. He added that attorneys tend to cite more prior art because it’s safer.

“If the USPTO is encouraging patent attorneys to submit fewer prior art documents in an IDS and telling us that if we submit any duplicative or cumulative references in that case, there can be a penalty for that,” Borella said, “that actually puts us in a very difficult position, because we have the courts that are incentivizing us to do the opposite.”

“If we don’t cite enough prior art, patents can be invalidated by the courts,” he added. “But here the patent office is saying, ‘Well, you can’t cite too much prior art.’”

In Uribe’s view, the guidance isn’t so much incentivizing the inclusion of less prior art as it is putting the burden on attorneys to carefully scrutinize applications.

“The focal point was saying, ‘You can submit as much art as you feel is necessary or appropriate, but as an attorney and a practitioner, you have the obligation to have made that decision as to why you’re submitting it and what’s in the submission,’” he said.

The PTO has previously tried to address large disclosure statements. A 2006 proposal would have required disclosures with more than 20 citations be accompanied by an explanation of relevance, according to its recent proposed rulemaking on fees. It wasn’t adopted, and the agency instead gave examiners additional time to consider larger submissions.

If the guidance is just a warning to practitioners to be diligent, that won’t cause an issue, Borella said. The potential problems would arise from the office taking action stemming from the guidance.

“If they start going after applicants and attorneys for submitting too much prior art, then we’ve got the issue of us having to make really tough decisions on what prior art not to submit and opening ourselves up to inequitable conduct as a result,” he said.