by Dennis Crouch
The USPTO’s new AI Strategy document both recounts the work the USPTO has already done and sets forth something of a vision for artificial intelligence. Of course the document’s release just one week before the transition to the Trump administration raises questions about its ultimate implementation. Time will tell whether the document is shelved, substantially modified, or implemented as written.
I wanted to take a look at a few of the biggest developments affecting day-to-day patent law practice.
AI Examination Guidelines: First, the USPTO is actively developing new examination guidelines for AI-related patent applications, focusing on core patentability requirements including subject matter eligibility, obviousness, enablement, written description, and inventorship. These will add to the February 2024 memorandum on AI-assisted inventions and a July 2024 update on subject matter eligibility. See “Inventorship Guidance for AI-Assisted Inventions,” 89 FR 10043 (Feb. 13, 2024); “2024 Guidance Update on Patent Subject Matter Eligibility,” 89 FR 58128 (Jul. 17, 2024).
AI Search Tools: Second, the USPTO has widely deployed AI-powered search tools for patent examination. “[N]early 80% of USPTO patent examiners had used AI-powered features such as More-Like-This-Document and Similarity Search across over 480,000 cases.” Apparently nothing yet for design patents or trademark image searches.
Ethics and AI in Legal Practice: Third, the USPTO issued guidance in April 2024 regarding the use of AI tools in legal practice before the agency. The guidance does not create any special AI rules, but outlines specific risk mitigation approaches and ethical considerations for practitioners using AI tools. The USPTO notes it is “the first Federal agency to specifically address AI’s use in legal practice before the agency,” making this a landmark development in legal ethics.
Huge Numbers of AI related Patent Applications: Fourth, the strategy document reveals dramatic growth in AI-related patent applications. The report notes that there is also breadth – with AI related applications appearing in “60% of all technology subclasses.” Practitioners across all technical fields need to develop at least basic AI competency.
AI as the Inventor: Finally, the strategy indicates continued focus on AI-generated and AI-assisted inventions, with specific attention to inventorship issues. The USPTO plans to “advocate for judicial positions, consistent with existing legal precedent, that would encourage innovation with respect to issues including AI-generated prior art and AI-assisted inventions.”