Ouroboros Now – A Patent for an AI-Based Method for Drafting Patent Applications
Artificial intelligence is seemingly everywhere these days, and patent law is no exception. A few months the USPTO issued US Patent 11,966,688, “AI-Based Method and System for Drafting Patent Applications” (“the ‘688 patent”). The ‘688 patent broadly claims methods and systems for drafting patent applications using a short description of the inventive concept as the only user input. This piece examines some issues with the ‘688 patent, and some other that considerations come into play for using generative AI in drafting patent applications, especially in view of the recently-issued ABA Opinion 512, “Generative Artificial Intelligence Tools.”
Claim 1 of the ‘688 patent broadly covers a method of drafting patent applications using AI:
1. A method for improving an efficiency and a performance of a system for drafting a patent application by utilizing an Artificial Intelligence (AI) machine, comprising: (a) inputting, through a user interface, a short description of an inventive concept into an AI machine; (b) quarrying the AI machine to draft one or more patent claims based on the short description; (c) inputting the drafted patent claims into a second quarry; and (d) requesting the second quarry to draft a patent application based on the drafted patent claims and receiving, through said user interface, a drafted patent application drafted by said second quarry.
(There are also system claims in the ‘688 patent of similarly broad scope.)
There are at least two major problems with this claim: 1) the vagueness of the recitation of “a short description”; and 2) the mystifying use of the term “quarry.”
The specification sheds little light on what is meant by “a short description of the inventive concept.” No examples are given, and the only details provided (and also included in dependent claims) are that the short description may include “one or more keywords identifying the inventive concept,” may include “a summary of the inventive concept,” or may include “one or more features of the inventive concept.” This is arguably inadequate for clearly defining the metes and bounds of the claim, leaving it open to a challenge that the claims are indefinite.
As to the other issue, “quarry” and “quarrying” are used throughout the specification of the ‘688 patent. This is clearly the wrong word – presumably “query” was intended. While a patent applicant can be their own lexicographer, to do so requires the applicant to clearly set forth in the application a definition of the term(s) involved, in order to overcome the presumption that the ordinary and customary meaning of terms applies. The ‘688 patent contains no such special definition (or any definition) of the terms “quarry” and “quarrying.” To the contrary, the specification specifically states that absent a special definition, “all terms (including technical and scientific terms) used herein have the same meaning as commonly understood by one of ordinary skill in the art to which this invention belongs.”
More broadly, the ‘688 patent appears susceptible to attack on other grounds, such as lack of enablement and claiming of patent-ineligible subject matter. For the time being, however, a right has been secured to prevent others in the U.S. from drafting a patent application according to the claimed method.
Using generative AI (GAI) to draft patent applications raised a number of other issues, some of which came up in the ABA’s recently released formal opinion (ABA Opinion 512) on the use of GAI in legal matters.
First of all, the ABA’s opinion cautions that reliance on GAI-generated documents could violate Model Rule 1.1, which obligates lawyers to provide competent representation to clients. As the opinion states, a lawyer should apply “an appropriate degree of independent verification or review” to GAI-generated output. This is of particular importance for a patent application, a document that USPTO characterizes as “a complex legal document, best prepared by one trained to prepare such documents.” Blind reliance on GAI (or even an inexperienced or unqualified practitioner) to produce a patent application could result in permanent loss of patent rights to an invention.
Second, use of GAI could jeopardize client confidential information, implicating Model Rule 1.6. Patent applications almost always include confidential information about the invention, and premature dissemination of these details can jeopardize the patentability of claims, both in the U.S. and in other countries. Of course such client confidential information should not be input into a GAI tool that allows the information to be accessed by others, or to be made a part of the pool of knowledge that the GAI tool uses in generating text for other users. But as the ABA opinion notes, misuse of confidential information is a concern even for a closed GAI tool that keeps information local to a law firm, because others in the firm “could inadvertently use the information from one client to help another client, not understanding that the lawyer is revealing client confidences.” In patent application preparation, this could mean details from one client’s invention, input into a GAI tool, inadvertently making their way into another patent application (possibly for another client) generated by the GAI tool.
Finally, there is a concern particular to patent applications, that of technical information being communicated outside the United States without a proper foreign filing license. This is an issue for US applicants when using ePCT software, which resides on WIPO servers in Switzerland, to prepare PCT filings. See “Facilitating the Use of WIPO's ePCT System To Prepare International Applications for Filing With the United States Receiving Office,” 85 FR 5362 (January 30, 2020). It also implicates the propriety of using, in the preparation of patent applications, GAI tools that involve transmission of data outside the U.S. See “Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office,” 89 FR 25609, 25612-13 (April 11, 2024) (“Practitioners must .. ensure [that] data is not improperly exported when using AI systems”). Even a foreign filing license would not authorize exportation of data for preparation of a U.S. patent application, since “the export of subject matter abroad for purposes not related to foreign filing of a patent application …, such as preparing an application in a foreign country for subsequent filing in the USPTO[,] is not covered by any license from the USPTO,” MPEP 140.
Embarking on the path into this brave new world of AI, the lure of improved efficiency should not lead us to overlook the possible pitfalls. As we proceed down this road, we should do so with due caution.
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