Vidal Clarifies Application of Existing USPTO Professional Conduct Rules to AI

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal has released a guidance memorandum for the Trademark and Patent Trial and Appeal Boards (TTAB and PTAB) on the misuse of artificial intelligence (AI) tools before the Boards that largely clarifies the application of existing rules to AI submissions.

The announcement is a precursor to a coming Federal Register Notice that will provide additional guidance on the use of AI tools for the public and other USPTO departments.

The guidance document suggests that part of its impetus was Supreme Court Chief Justice John Roberts’ recent year-end report, which acknowledged both the benefits and dangers of AI in the context of the legal profession. Roberts noted one recent case concerning former Trump lawyer, Michael Cohen, in which an AI “hallucination”—where an AI tool fabricates information—might lead to sanctions against Cohen and his attorney.

The USPTO guidance explained that it already has rules to protect the integrity of proceedings and that “those rules necessarily apply regardless of how a submission is generated.” The USPTO Rules of Professional Conduct and the USPTO’s rules requiring a signature and that the signatory attest that all statements made are believed to be true and have been confirmed by “an inquiry reasonable under the circumstances” apply equally to submissions made with AI assistance. “Simply assuming the accuracy of an AI tool is not a reasonable inquiry,” said the guidance document.

Possible sanctions for failure to confirm the accuracy of submissions include “striking the offending paper,” “affecting the weight given to an offending paper,” “terminating the proceedings in the Office,” disciplinary action, and in cases of knowing or willful violations, even criminal liability.

AI hallucinations have emerged as a major problem with large language model (LLM) technologies like OpenAI’s ChatGPT. In the recent New York Times cases against OpenAI, the Times’ complaint provided examples of hallucinations in which Bing Chat “completely fabricated” a paragraph from a Times article by “including specific quotes attributed to Steve Forbes’s daughter Moira Forbes, that appear nowhere in The Times article in question or anywhere else on the internet.” In another example of hallucinations, Bing Chat generated a list of heart-healthy foods based on a specific New York Times article, but the article in question did not even mention 12 of the 15 foods on the list. The complaint included several other examples of hallucinations that resulted in fake article headlines about COVID-19 with non-working links and a fabricated headline about the link between orange juice and non-Hodgkins lymphoma that was attributed to the Times.

The announcement also noted that the Office continues to be active on AI issues in other contexts and “will soon be releasing guidance on inventorship of AI-enabled innovations, will seek further comment on other aspects of patentability, and will issue recommendations for executive action related to copyright and AI.” President Biden’s recent Executive Order on Safe, Secure, and Trustworthy AI directs the USPTO Director to “within 270 days of the date of the order or 180 days after the United States Copyright Office of the Library of Congress publishes its forthcoming AI study” issue recommendations to the President, in consultation with the Director of the Copyright Office, on potential executive actions to be taken relating to copyright and AI.