Embracing AI Innovation: Insights on the USPTO’s Newest AI Strategy

As patent practitioners, we are at the nexus of technology and law, a position that compels us to stay attuned to transformative trends. The USPTO’s newly unveiled Artificial Intelligence (AI) Strategy offers a comprehensive vision for navigating AI’s role in innovation and intellectual property (IP). Here’s what you need to know.

The Foundation of the Strategy

The USPTO’s AI Strategy underscores a commitment to fostering innovation, ensuring fair competition, and maintaining U.S. leadership in the global AI race. This approach includes leveraging AI to enhance internal operations while shaping policies that address AI’s complexities in patents, trademarks, copyrights, and trade secrets.

The agency’s data reveals a significant surge in AI-related patent applications—doubling since 2002 and growing 33% since 2018. This shift highlights the expanding influence of AI across industries, from healthcare advancements to groundbreaking consumer technologies.

Key Areas of Focus

1.Policy Development: The USPTO is prioritizing policies that incentivize inclusive AI innovation while ensuring IP systems evolve alongside technological advancements. This includes addressing questions of AI inventorship and the protection of AI-generated works.

2.Operational Efficiency: AI-driven tools are already aiding patent examiners by streamlining prior art searches. These innovations enhance decision-making and reduce time-to-approval, benefiting both practitioners and applicants.

3.Responsible AI Use: The USPTO aligns with federal initiatives to ensure AI systems uphold transparency, equity, and accountability, critical for maintaining public trust.

What It Means for Practitioners

AI is not just a tool—it is redefining the boundaries of creativity and invention. As legal professionals, we must prepare for the complexities this technology introduces, such as:

•  Navigating the intersection of generative AI and copyright law.

•  Advising clients on IP strategies for AI-assisted innovations.

•  Addressing ethical implications and risks tied to AI use in legal practice.

Engagement Opportunities

The USPTO actively seeks input from stakeholders through initiatives like the AI/ET Partnership and public consultations. These forums offer a chance to shape the discourse on IP and AI, ensuring it reflects the realities of practice.

Looking Ahead

AI’s integration into IP processes marks a pivotal moment for the profession. Whether you view AI as an enabler or a disruptor, its trajectory will undoubtedly influence how we counsel clients, draft applications, and protect innovation. As we adapt, the USPTO’s strategy provides a roadmap, balancing innovation with responsibility—a dual imperative for those of us entrusted with the protection of ingenuity.

Let’s remain at the forefront of these developments, engaging with the USPTO and leveraging AI to better serve innovators worldwide.

 

About the Author

Mr. Copely is the U.S. Patent Practice Group Leader at Sonderhoff & Einsel, bringing nearly 20 years of experience in U.S. patent drafting and prosecution. He collaborates with a diverse range of clients, including leading companies from Japan, Europe, the United States, China, Taiwan, and Korea, ensuring their intellectual property is effectively protected under U.S. law.

In addition to his client-focused work, Mr. Copely is a seasoned consultant, providing specialized guidance to members of corporate IP departments and attorneys. His practice emphasizes delivering high-quality U.S. patent applications by drafting patents in English and refining translations to meet rigorous U.S. standards.

Mr. Copely is dedicated to bridging the gap between Japanese and U.S. patent law, offering his clients a unique combination of linguistic proficiency, legal expertise, and cultural understanding. Mr. Copely is committed to empowering global innovators with expert legal support and strategic insights.

Disclaimer

The views and opinions expressed in this article do not necessarily reflect those of the author and do not necessarily reflect the official policy, position, or views of the author’s employer, law firm, or any of its clients. This article is intended for informational and discussion purposes only and should not be construed as legal advice. Readers are encouraged to consult with their own legal counsel for guidance on any specific legal matters.

USPTO to begin issuing certificates of correction electronically beginning on January 30, 2024

Beginning on January 30, 2024, the USPTO will start issuing certificates of correction in a paperless, electronic format. The electronically issued certificates of correction will be immediately available to view online using the USPTO Patent Center upon the issuance of the patent itself. Electronic certificates of correction will be issued regardless of whether the patent has already issued electronically, or in paper format.

Until January 30, 2024, certificates of correction will continue to be issued in paper format and mailed via post to the correspondence address on record for the patent. After the paper certificate of correction is issued, a scanned image of the paper certificate of correction is entered into the file wrapper and added to the image of the patent in the patent database. Additionally, the patent number corresponding to the certificate of correction is published in the Official Gazette.

If you have any questions regarding certificates of correction, please do not hesitate to contact our office.

USPTO: Notice of upcoming DOCX filing fee date of January 17, 2024

The USPTO recently announced its intention to move forward with the implementation of the $400 USD fee for filing specifications and claims in non-DOCX format on January 17, 2024. While it may be possible that the USPTO will extend the deadline again, it appears more likely than not that the USPTO will not extend this deadline any further.

This filing fee applies to all non-provisional applications and continuing applications, but it is important to note that this fee does not apply to drawings, national stage applications, design applications, and provisional applications, which can still be filed in PDF format without incurring the surcharge.

If your organization has not made a decision about whether or not to transition to filing in the DOCX format, we encourage you to make a decision soon in order to prepare for the implementation of the non-DOCX filing fee.

If you have any questions or require more information, please do not hesitate to contact our office.