We are proud to announce the release of our groundbreaking white paper, GenAI in Patent Drafting: The Need for Further Guidance, which examines the U.S. Patent and Trademark Office’s (USPTO) recent guidance on the use of generative artificial intelligence (GenAI) in patent practice.
The white paper highlights the transformative potential of GenAI in patent drafting—including enhanced efficiency, consistency, and scalability—while also warning of significant risks if AI is used without clear attorney oversight. These risks include challenges around inventorship and compliance with the duty of candor practitioners owe to the USPTO when using GenAI.
When it comes to the impact of AI in the patent field, the U.S. Patent and Trademark Office (USPTO) has taken the lead over other major patent offices worldwide by issuing critical guidance in this area. However, an area needing clarification between the two dominant guidance documents remains. This paper offers a path forward by calling for structured, attorney-guided frameworks to ensure innovation is supported without compromising legal integrity.
The white paper urges the USPTO to continue leading globally on innovation policy and to supplement their existing guidance with:
- examples of permissible vs. impermissible uses of GenAI in claim drafting;
- clarification on what constitutes significant human contribution to claim scope when GenAI is involved;
- clarification on how human contribution should be tracked or documented, including whether the patent drafter’s interactions with GenAI must be preserved;
- clear standards for identifying and labeling “prophetic examples” in patent applications;
- examples of scenarios where the duty of candor may be violated through the unmonitored use of GenAI;
- examples illustrating how AI-generated alternative embodiments or modifications may improperly influence claim scope or inventorship; and
- encouragement the development and adoption of structured, attorney-guided frameworks to ensure oversight in GenAI-driven patent drafting
The white paper is available on SSRN here.
