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Proposed patent fee changes for fiscal year 2025

Published on: 04/02/2024 13:45 PM

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America's leading patent law source

Using AI in your Patent Practice

By Dennis Crouch

Over the past year I’ve been investigating various generative Artificial Intelligence (GenAI) tools for assisting patent attorneys in their practice.  I have a strong belief that these tools and their progeny are now fixtures in our legal environment and are being used to both improve efficient delivery of legal services and to also improve the quality of those services.  Of course the generative creativity of our LLMs go hand in hand with hidden false narratives or hallucinations. Vendors are stepping up to thread the needle here: providing valuable GenAI tools while limiting false story telling.  As we move forward some of the struggle will be a focus on how much the attorney needs to know about how the GenAI works in order to use it responsibly.

Enter the USPTO and its Wet Blanket : The USPTO has released new guidance on the use of AI tools in practice before the USPTO.   USPTO AI Usage Guidance .   The notice largely offers cautionary guidance — focusing on the need to mitigate the risks associated with the use of AI through both technical measures and human oversight. As stated in the notice, “While the USPTO is committed to maximizing AI’s benefits and seeing them distributed broadly across society, the USPTO recognizes the need, through technical mitigations and human governance, to cabin the risks arising from the use of AI in practice before the USPTO.”

One of the key takeaways from the notice is that existing USPTO rules and policies apply to the use of AI tools in matters before the Office. The notice is designed as a reminder to individuals involved in proceedings before the USPTO of that these pertinent rules and policies, and provides suggestions to mitigate the risks associated with AI use.

The duty of candor and good faith is a central focus of the guidance. The notice emphasizes that this duty applies to all conduct before the USPTO, stating that “the duty of candor and good faith applies to positions taken by applicants or parties involving the claimed subject matter.” Practitioners must ensure that any AI-assisted work product is carefully reviewed for accuracy and completeness before submission to the USPTO. It is not the AI filing work with the USPTO, but rather it is the party and their attorneys.

The notice also addresses the signature requirement and corresponding certifications under 37 CFR 11.18(b). By signing or presenting a piece of correspondence, the party certifies that all statements made therein are true to the best of their knowledge and that they have performed an inquiry reasonable under the circumstances. The notice makes the strong claim that “Simply relying on the accuracy of an AI tool is not a reasonable inquiry.”

In the context of patent applications, the notice provides specific examples of how the duty of disclosure may be implicated when using AI tools. For instance:

if an AI tool is used in drafting or editing a document, the party must still review its contents and ensure the paper is in accordance with the certifications being made. For example, given the potential for generative AI systems to omit, misstate, or even “hallucinate” or “confabulate” information, the party or parties presenting the paper must ensure that all statements in the paper are true to their own knowledge and made based on information that is believed to be true. Additionally, the party or parties should also perform an inquiry reasonable under the circumstances confirming all facts presented in the paper have or are likely to have evidentiary support and confirming the accuracy of all citations to case law and other references. This review must also ensure that all arguments and legal contentions are warranted by existing law, a non-frivolous argument for the extension of existing law, or the establishment of new law.

The guidance also addresses the use of AI tools in accessing and interacting with USPTO IT systems. Users must ensure that their use of these tools does not violate federal and state laws, as well as USPTO regulations and policies. The notice reminds users that “AI systems may not obtain a USPTO.gov account” and that “practitioners may not sponsor AI tools as a support staff individual to obtain an account.”

Confidentiality and national security considerations are also discussed in the notice. The use of AI tools may result in the inadvertent disclosure of client-sensitive or confidential information to third parties. Practitioners must be vigilant in ensuring the confidentiality of client data when using AI tools or relying on AI-related third-party services. The notice also warns that “AI tools may utilize servers located outside the United States, raising the likelihood that any data entered into such tools may be exported outside of the United States, potentially in violation of existing export administration and national security regulations or secrecy orders.”  The USPTO appears to be quite serious on this front – trying to make it crystal clear that fraud and intentional misconduct will not be tolerated in any manner before the Office or in connection with accessing USPTO IT systems.

Still, the Guidance attempts to establish a middle ground, recognizing that “[p]atent practitioners are increasingly relying on AI-based tools to research prior art, automate the patent application review process, and to gain insights into examiner behavior.”

We might talk through one simple example here.  With the USPTO’s upcoming fee increase for IDS filings in Fall 2024, many folks will be willing to pay to both identify the best prior art and to use automated tools to eliminate references that are  either cumulative or not material to the claims.    In some patent cases 10,000+ pages of prior art can easily be identified, and neither the patent attorney nor the examiner wants to individually cull through each reference.  AI tools seem to offer an excellent tool for reducing the problem.

The USPTO’s  guidance document raises a different concern – that the agency will be bombarded with too many references for an examiner to individually review.  On this point, the guidance doubles down on prior statements that:

By signing, [the patent practitioner who submits the IDS] is certifying that they have performed a reasonable inquiry—including not just reviewing the IDS form but reviewing each piece of prior art listed on the form—and determined the paper is compliant with 37 CFR 11.18(b). Regardless of where prior art is found, submitting an IDS without reviewing the contents may be a violation of 37 CFR 11.18(b).

In my view, this approach is backwards, especially when coupled with the new IDS fees — the biggest reason is that the USPTO examiner is better off with having more prior art than less prior art. Our search tools are powerful enough for examiners to very quickly search through 10,000 pages of documents to identify those that are most relevant to the claims being pursued and then rely upon them for a rejection.  This only becomes a problem when the patent office requires a human (either patent attorney or patent examiner) to actually read through each document individually.

The guidance offers other suggestions for using AI tools:

• Drafting the patent specification itself as well as responding to office actions : “For example, recent tools directed to the IP industry include the ability to draft technical specifications, generate responses to Office actions, write and respond to briefs, and even draft patent claims.”
• Conducting and reviewing prior art searches : “Patent practitioners are increasingly relying on AI-based tools to research prior art, automate the patent application review process, and to gain insights into examiner behavior.”
• Generating patent claims : “In situations where an AI tool is used to draft patent claims, the practitioner is under a duty to modify those claims as needed to present them in patentable form before submitting them to the USPTO.”
• Automating the patent application review process : “Patent practitioners are increasingly relying on AI-based tools to research prior art, automate the patent application review process, and to gain insights into examiner behavior.”
• Preparing evidence of patentability or unpatentability : “AI systems could also be used in the submission of evidence of patentability or unpatentability (e.g., evidence of secondary considerations). Though AI may be used to identify evidence or even draft affidavits, petitions, responses to Office actions, etc., practitioners are required to verify the accuracy of factual assertions, both technical and legal, and ensure that all documents, including those prepared with the assistance of AI, do not introduce inaccurate statements and evidence into the record, either inadvertently or intentionally, or omit information that is material to patentability.”

USPTO’s guidance on the use of AI tools in practice before the Office is a timely and necessary response to the growing adoption of these technologies in the legal profession. Patent law professionals, including patent attorneys and USPTO patent examiners, must familiarize themselves with this guidance and ensure compliance with the existing rules and policies when utilizing AI tools in their practice.

10 thoughts on “ Using AI in your Patent Practice ”

Talk about putting yourself out of a job!

What is it about this comment which you think readers of Patently-O would find offensive? Thanks for your report!

… and yes, these points reflect my own past calls for discussions of things AI, that I first presented years ago in relation to the DABUS case.

Of course, my detractors will again deny this.

I’ll bite. Who cares enough about you to be a detractor?

Connect the dots:

Combine this with the prior notice requesting differentiation and identification of any inventive aspects that distinguishes what a human – in and of themselves – may rise to be a legal inventor, and this is a clear warning that any inventions that do not rise to being fully and totally (only) by humans, will not be enforceable.

… this will be a wet blanket for a certain Pharma executive who has testified publicly that their inventions were made by AI (just about a year ago, as I recall).

Will examiners have a duty to disclose their use of AI?

“In my view, this approach is backwards, especially when coupled with the new IDS fees — the biggest reason is that the USPTO examiner is better off with having more prior art than less prior art. ”

Rule 56 should just be done away with.

As for IDS, the key word of “review” (as in, review every document) is rather conveniently undefined and something as simple as “Yup, that’s a document, go ahead and include it” suffices.

For what it’s worth, most (all?) of these “guidelines” applied to (1) using a computer to search the Internet and copying/pasting information found there into a patent application, and (2) using spell/grammar checking programs and/or application templates discovered online.

Computers are t 0 0 ls. Use wisely.

lol – how did your attempt at reformatting your hard drive with that Britney Spear CD go for you?

Your attempted equivalence statement here is on par.

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USPTO Stands Behind Significant New Fees for 2025

The USPTO has taken another step toward implementing fee adjustments in January 2025, by publishing a Notice of Proposed Rulemaking (RPRM) on April 3, 2024. The NPRM stands by most of the significant fee adjustments it proposed in April 2023 , with a few changes made in response to input from the Patent Public Advisory Committee (PPAC). Stakeholders will want to plan ahead for across-the-board fee increases of about 5% and more significant targeted fee adjustments (and new fees) that could impact patent prosecution strategies.

Proposed Fee Adjustments

Detailed information on the proposed fee adjustments is available on the USPTO’s  Fee-Setting web page . There you can find a slide deck that provides an overview of the proposed fee changes (in alphabetical order), as well as documentation supporting the proposals.

The following summary lists fees at the undiscounted (large entity) rate.

Significantly Higher Fees

Examples of significantly higher fees include:

• The aggregate of filing, search, examination, and issue fees for design patents will increase by about 48%
• Excess claim fees will double to US$200 for each claim over 20 and increase 25% to US$600 for each independent claim over three.
• 1 st RCE: US$1,500 (+10% over current fee)2 nd RCE: US$2,500 (+25% over current fee)
• 3 rd RCE: US$3,600 (+80% over current fee)
• The fee for a Request for Reconsideration of the USPTO’s Patent Term Adjustment calculation will increase 43% from US$210 to US$300
• The fee for a Patent Term Extension application (e.g., based on FDA review of a regulated product) will increase 468% from US$1,180 to US$6,700

New Fees Aimed at Cost Recovery

• After Final Consideration Pilot Program Request: US$500
• Petitions associated with unintentional delay of > 2 years: US$3,000

New Fees That Could Change Applicant Behavior

• Continuing Application Surcharge, filed ≥ 5 years after earliest benefit date: US$2,200
• Continuing Application Surcharge, filed ≥ 8 years after earliest benefit date: US$3,500

The NPRM defines “earliest benefit date” as the earliest priority date claimed under 35 USC § 120, 121, 365(c) or 386(c), and 37 CFR § 1.78(d), also known as the “patent term filing date” (e.g., the date from which the 20-year patent term is calculated), and not including priority claims to provisional applications. The NPRM expressly includes divisional applications in the category of “continuing” applications that could be encompassed by these fees.

• > 50 items: US$200> 100 items: US$300
• > 200 items: US$300
• Before a first Office Action on the merits: US$200
• Before a final Office Action: US$500
• After a final Office Action or Allowance: US$800
• On or after filing a Notice of Appeal: US$1,100
• After patent grant: US$1,400

PTAB Trial Fees

• Petition fees for PTAB trials will increase by about 25%
• There will be a new US$440 fee for a Request for Director review of a PTAB decision

Did the USPTO Take Any of PPAC’s Advice? 

The NPRM addresses PPAC’s comments  on the proposed fee adjustments, but the USPTO maintained most of the fee increases PPAC objected to. It dropped the proposal to impose a nominal fee for recording an assignment submitted electronically, stated that it is withdrawing the proposal to permit additional words in an inter partes or post-grant petition for a fee, and adjusted the timing of the continuing application surcharges (originally proposed to take effect at > 3 years and > 7 years), but otherwise responded by providing more justification for the original proposals. With that history in mind, it is not clear whether stakeholder comments could have any impact on the final schedule, but the USPTO is obligated by law to consider written comments properly submitted through the Federal eRulemaking Portal by June 3, 2024.

Courtenay C. Brinckerhoff

Related insights, federal circuit applies safe harbor to imported medical device samples, which significant uspto fee increases might we see in 2025, uspto releases guidance on rule 132 declarations.