AI and Patent Law: Can Machines Uphold the Duty of Disclosure under 37 CFR 1.56?

The world of intellectual property law is buzzing with questions and commentary regarding the practicality and ethics of using artificial intelligence to aid the practice of law before the USPTO.  As I addressed in a prior blog post, some of the concerns are much ado about nothing. However, one question previously left unanswered was the potential argument that “Rule 56” may have imputed some knowledge from the LLM or tool—creating an extraordinary obligation under the USPTO’s duty of disclosure rule, 37 CFR 1.56.

On April 11, 2024, the USPTO published more detailed guidance, which addresses this issue.  The USPTO’s recent guidance cements the idea that LLMs and AI can broadly be used by practitioners and applicants before the USPTO.  In fact, the guidance states: “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.”

Those that understand the duty of disclosure understand that it applies those inventors, practitioners, and others substantively involved in the preparation and prosecution of trademark applications.  The USPTO’s recent guidance seemingly tells practitioners that the duty is limited to those categories of individual–humans–and not the tools they use, whether AI or otherwise.

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 § 1.56(c) individuals who must ensure that all material information is submitted to the USPTO.

Of course, the USPTO’s guidance also reminds practitioners of their duty to ensure that all material information is submitted to the USPTO.  In doing so, the USPTO suggests that the information disclosure statements are carefully reviewed by practitioners “to ensure that all material information is disclosed to prevent material information from being unknowingly omitted.”

I applaud the USPTO for this common sense approach to Rule 56 and the related disclosure obligations.  Moreover, the guidance provides practical information that practitioners and applicants can review to better understand their obligations and best practices.