In the Bloomberg Law article “Patent AI Notice Spurs Concerns of Dueling Disclosure Priorities,” Knobbe Martens partner Mauricio Uribe provided additional commentary and analysis of how the US Patent and Trademark Office’s (USPTO) latest guidance on using AI (artificial intelligence) in patent filings could impact practitioners.
The article specifically focuses on how practitioners have interpreted the guidance’s points on using AI-based tools with regard to the preparation and submission of Information Disclosure Statements (IDS) during prosecution. “These tools can be amazing for generating very large numbers of prior art references, and that isn’t necessarily a bad thing,” said Uribe. However, he added that the USPTO’s concerns about AI are not unfounded and underscored the danger of submitting irrelevant or fake prior art.
Ultimately, Uribe maintained, the guidance encourages attorneys to carefully vet any submissions that are generated with the help of AI. He summarized his interpretation of this point from the guidance, 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.”
Read the full article here [subscription may be required]. Uribe also spoke with Law360 on this same topic; you can find those comments here.
