US Patent and Trademark Office Releases AI Guidelines for Submissions

The U.S. Patent and Trademark Office (USPTO) has released guidance addressing the utilization of artificial intelligence (AI) in submissions to the Office, aimed at both practitioners and the general public.

This announcement follows the issuance of a memorandum by the Office to the Trademark and Patent Trial and Appeal Boards (TTAB and PTAB) two months ago, which provided clarification on the appropriate use of AI tools before these Boards, aligning with existing regulations.

“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 PTAB and TTAB,” the guidance reads.

“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,” it adds.

This guidance serves as a reminder to participants in USPTO proceedings of the relevant rules and policies, educates them on the risks linked to AI system usage, and offers suggestions for risk mitigation. 

AI can't hold patents 

Earlier this year, USPTO, through another guidance, also embraced the integration of AI in innovation. At the same time, the office stressed the necessity of attributing a human contributor to a patent.

This guidance clarifies that while AI-assisted inventions are not automatically ineligible for patents, the assessment of inventorship should prioritize human input.

The USPTO will examine inventorship matters as AI systems, such as generative AI, become more prevalent in the innovation landscape. Patents serve to encourage and recognize human creativity, thus warranting a focus on human contributions during the inventorship evaluation, the patent office said.

Previously, President Biden, through his AI executive order (EO), called on the agency to provide guidance to patent examiners and applicants on the same.