Augmented Patent Drafting and Ethics

We live in interesting times.  Specficio (here) allows registered practitioners to submit a claim set (one independent with as many dependent as desired), and the software drafts a specification for review before submission.  Currently, it supports only software-related inventions.  The biographies of the founders reveal a lawyer, a venture capitalist, a linguistic expert, and more.

AI is going to affect everything in the law, and it happened already and will increase in speed exponentially (literally) over the next few years.  Beyond the basic question of the quality of the value-add the service provides, I had these questions:

First, what about conflicts?  This entity is going to provide a specification to anyone who submits a claims set.  So, imagine two competitors, and a lawyer for Company A and a lawyer for Company B submit claim sets, and submit them.  This company provides specs for claims that interfere.  Conflict of interest?  If it’s not, why not?  In this regard, the TOS says that it is not providing legal advice, and so any ethical rules about conflicts would not apply, presumably.

Second, and related to that, what about confidentiality?  The privacy policy states that it is taking steps to avoid “cross pollination” of applications and that no human looks at the text. The privacy policy is a complex read:

  1. Privilege and Confidentiality.

Privilege

You are engaging Specifio to provide the Site and Services in order to assist you in providing provision of legal advice to your client.

It is understood that only you and your client have the right to assert or waive the attorney-client privilege, not Specifio.

To the extent permitted by law, it is intended and agreed that any communications made to Specifio by you or your client in connection with your use of the Site and Services shall be privileged and that any such communications shall be made to facilitate communications between you and your client and to aid you in rendering legal advice to your client.  We, therefore, shall not divulge to anyone any communication (or part or substance thereof) received from you or your client in connection with the Site and Services.

Definition of Confidential Information

For the purposes of this paragraph 1, “Confidential Information” means patent claims, and any resultant draft patent application specifications and/or drawing figures generated by the Services, that you e-mail to us or that we e-mail back to you in accordance with the intended use of the Services.

Restrictions on Use and Disclosure 

Keeping your Confidential Information safe is paramount for Specifio.  In addition to our obligations respecting privilege described above, we will not use your Confidential Information except to provide you with the Services and as described in this Privacy Policy.  We will maintain in confidence and protect your Confidential Information using at least the same degree of care as we use for our own information of a similar nature, but in all events at least a reasonable degree of care.

Your patent claims can be e-mailed to Specifio in password-encrypted Microsoft Word documents, which is how Specifio returns draft specifications to you.  Specifio runs on secured (data encrypted) U.S.-based servers and does not keep copies of Confidential Information, except for the obscured content-stripped versions described below.  At every step of the way, Confidential Information is guarded from human eyes or other outside access, as described in this Privacy Policy.

We may keep and use obscured content-stripped versions of your Confidential Information; however, the content words will be removed from the documents and replaced with nonspecific symbols so that the meaning of the text cannot be ascertained.  For example:

The statement

The present disclosure relates to systems and methods for facilitating review of a confidential document by a non-privileged person by stripping away content and meaning from the document without human intervention such that only structural and/or grammatical information of the document are conveyed to the non-privileged person

would look something like this:

the p0018 d0017 r0019s to systems and methods for f0000ing r0001 of a c0002 d0003 by a n0004 p0005 by s0006ing a0007 c0008 and m0009 from the d0003 without h0010 i0011 such that only s0012 and/or g0013 i0014 of the d0003 are c0015ed to the n0004 p0005.

We use these obscured content-stripped versions for limited internal purposes only, such as to analyze document structures and word forms, which helps use do things like provide you with better support services and improve the Services.

In addition, Specifio does not train its machine-learning models on the content of any Confidential Information.  This helps ensures there is never “cross pollination” between patent applications.

We will not disclose to anyone that you are a Specifio customer or that you are using the Services, without your prior written consent in each instance.

Exclusions

The restrictions set forth in paragraph 1 will not apply with respect to any Confidential Information that: (i) was or becomes publicly known through no fault of ours; (ii) was rightfully known or becomes rightfully known to us without confidential or proprietary restriction from a source other than you who has a right to disclose it; (iii) is approved by you for disclosure without restriction in a written document which is signed by you; or (iv) we independently develop without access to or use of your Confidential Information.  The restrictions set forth in paragraph 1 will not restrict us from disclosing Confidential Information pursuant to the order or requirement of a court, administrative agency, or other governmental body, provided that we give you reasonable notice to enable you to contest such order or requirement

The restrictions set forth in this paragraph 1 will survive the termination or expiration of your use of the Site and Services.

You agree to reimburse us for reasonable legal fees and expenses incurred in connection with any litigation or administrative proceeding resulting from: (i) our failure or refusal of to comply with any attempt to compel us to disclose any communication described in described in this paragraph 1 (or part or substance thereof) or to produce documents or (ii) the obtaining of, or attempt to obtain, a court order compelling us to disclose any communication described in this paragraph 1 (or part or substance thereof) or to produce documents.

Given this, one would think the information submitted would remain privileged because of normal privilege doctrine (a lawyer can have non-lawyers help her draft a spec, for example, without waiving privilege), and the site’s privacy policy quoted above indicates that it will do its best to preserve whatever privilege you have.  (Though apparently it won’t assert privilege.)

To sum up for a moment, the folks behind this seem to have thought a number of issues through, and there is great comfort in the TOS and privacy policy in some respects.  But, if I were you, I’d do some due diligence on what is behind the words, in part because of the limitations on liability and other limitations you will be agreeing to on behalf of your client. Among other things, the TOS basically eliminates, prospectively, almost all liability, requires you to indemnify it for any claims, and requires you arbitrate — which may require consultation with your client.

Next, despite saying that it’s not providing legal services, drafting a specification is — at least as the term is now understood — the practice of law.  If that is so, then we have a corporation providing legal services.  Can you use a corporation to provide legal services to your client in your state?  That might be the unauthorized practice of law, so check.  Further, the founders, presumably sharing the fees, do not appear to all be lawyers, or registered practitioners.  Lawyers cannot let non-lawyers control representations.  Lawyers cannot share legal fees with non-lawyers.  It all could be perfectly fine, but those facts gave me pause. Again, it’s a new world.

Further, the TOS says the services can be performed anywhere in the world.  That could create a need for disclosure to a client, and, potentially at least, some other issues if the information in the claims is particularly sensitive.

Please note: I’m not saying this is unethical, illegal, or a bad idea.  I have no informed opinion. I see issues.  I am a big fan of reducing legal costs and speeding up patenting (that’s going to be critical in the near future).  But, despite looking at the entity’s web page, I have questions that, if I were you, I’d investigate first.

12 thoughts on “Augmented Patent Drafting and Ethics

  1. It seems that it has become a somewhat acceptable practice to hire a non-lawyer (read engineer, patent technology specialist, etc.) to help an attorney draft an application without ruling afoul of the ethics rules (like hiring a paralegal).

    So if it is ok to hire a non-lawyer to help draft applications under the guidance of an attorney, is “hiring” an AI any different? I’m not sure, but something to think about.

  2. Just for the record, the fact that a specification flows naturally from a software claim is not surprising as the mere description of what software is suppose to do and how it is accomplished, even at the level of a claim, allows anyone of ordinary skill in the art to write the code. So why not a specification as well?

    1. Information processing claims are just like any other claims. It is the case that most claims enable one skilled in the art to make the invention. This is always true with chemical claims. And, is true even for pioneering inventions.

      Again, Ned, you are simply intentionally misrepresenting reality.

      1. Night, good point on a chemical compound. Often, I think, merely specifying the compound would allow one of ordinary skill to make it, thus the specification.

        The utility? — could be stated in a preamble.

        That would allow a complete chemical application to be drafted simply by specifying the claim.

        1. So, Ned, tell us how the claims are different in a different area? We know they are not and you are making this up for the consumption of the ignorant. Even pioneering claims like for a transistor or fiber optic cable are enabling.

          Just shameful the way you behave. Shameful and unethical.

          A real topic for this ethics blog should be the ethics of misrepresenting facts. Also, the different ethical standards for advocacy and academics and why a blog should at the very least identify paid bloggers.

          1. and why a blog should at the very least identify paid bloggers.

            Interestingly enough, once upon a time, the main blog page actually had a rule that prohibited paid bloggers (the posts were only to be the actual personal opinions of the person making the post).

            That rule never was enforced (or at least was not enforced when KNOWN transgressions of the rule were brought to the personal attention of the main blog’s “controlling” force, purportedly, the editor).

            As for a view into the wonderful world of propaganda (which is what the lack of enforcement of that rule invites), well, you are not the first to suggest that the ethics angle of such might be worth exploring.

  3. lots and lots here…

    But one thing in particular caught my eye:

    Further, the TOS says the services can be performed anywhere in the world. That could create a need for disclosure to a client, and, potentially at least, some other issues if the information in the claims is particularly sensitive.

    This flies directly in the face of controlling law as to export control (initial drafting is something that CANNOT be exported, because a request for export privilege arises after submission [and nominally review of that submission] of the application).**

    This “requires” more than mere “disclosure to the client.” This requires informing the client that they are basically throwing away their money in that the penalty for violating export controls laws is a nullified patent.

    **further, even getting into the USPTO private PAIR section requires an affirmative action to this statement:

    I understand that technology and/or software included in patent applications may be subject to U.S> dual-use export controls, which are set out in the Export Administration Regulations (15 C.F.R. parts 730-774). Access to such technology and/or software by any person located outside of the United States or by a foreign national inside the United States constitutes an export that may require a license from the U.S. Commerce Department’s Bureau of Industry and Security (BIS). I affirm that I am not accessing or permitting access by others to technology or software in a manner that would violate or circumvent the Export Administration Regulations.

    1. Actually, the export regulations are complex and your comment that initial drafting is something that cannot be exported is untrue, at least in the vast majority of inventions.

      1. It is absolutely NOT untrue, given that you must supply an application FIRST for the application to be evaluated BEFORE an export license is granted.

        There is no way around that.

        Violating that rule because you “feel” that the written application will “surely” obtain a favorable evaluation and an export license is still very much violating the rule.

        1. …complex as they may be, the logic of sequential timing is just not that complex

        2. Anon, you do know you’re wrong, don’t you?

          1. Give me a case number where you know the work of drafting the application was performed overseas prior to the request for an export license, AM.

            (you may want to be careful at this point)

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