Key takeaways for LegalTech and IP Professionals from the USPTO's AI Strategy

February 17, 2025

The USPTO Artificial Intelligence Strategy, released in January 2025, outlines the agency's approach to leveraging AI and addressing AI-related challenges in the intellectual property landscape.

This strategy was needed because:

1. AI is rapidly reshaping society and the economy, presenting both opportunities and risks for innovation and IP protection.
2. The number of AI-related patent applications has increased significantly, with a two-fold increase since 2002 and a 33% rise since 2018 alone.
3. There is a need to foster responsible and inclusive AI innovation while maintaining U.S. leadership in innovation.

The strategy highlights the USPTO's commitment to:

1. Promoting, empowering, and protecting innovation in the AI era.
2. Unleashing America's potential through AI adoption to drive U.S. innovation, inclusive capitalism, and global competitiveness.
3. Providing critical guidance and recommendations to advance AI-driven innovation and creativity.

Key Highlights

• Emphasizes responsible AI development and use
• Focuses on fostering AI innovation while protecting IP rights
• Aims to ensure inclusive participation in the AI innovation ecosystem
• Addresses the need for AI expertise within the USPTO workforce
• Promotes collaboration with domestic and international partners

Focus Areas and Takeaways

Focus Area 1: "Advance IP policies for inclusive AI innovation" aims to advance the development of IP policies that promote inclusive AI innovation and creativity.

This focus area encompasses several key initiatives and objectives:

(1) Anticipate and respond to emerging AI-related IP policy issues:

• Address implications of generative AI on inventorship, subject matter eligibility, obviousness, enablement, and written description.
• Consider AI's impact on trademark, copyright, and trade secret laws.

(2) Study the interplay between AI innovation, economic activity, and IP policy:

• Conduct economic and legal research on how IP policy affects AI-related innovation.
• Engage directly with AI researchers, practitioners, and other stakeholders.

(3) Foster inclusive participation in the AI innovation ecosystem:

• Encourage involvement with educational institutions and their participants.
• Contribute to broader IP policymaking discussions.

(4) Issue new policies on AI-related patents, trademarks, copyrights, and trade secrets.

(5) Monitor AI-related trademark developments:

• Increased emphasis on Name, Image, and Likeness (NIL) issues.
• Address "indicia of identity" concerns in trademark law due to AI-generated content.

(6) Explore AI-assisted inventorship and patentability of AI-driven innovations.

(7) Expand AI-related copyright considerations:

• Focus on AI-generated works.
• Address the growing importance of training data in AI system creation and intelligence.

By implementing these initiatives, the USPTO aims to create a supportive environment for AI innovation while ensuring that IP rights are protected and balanced across various stakeholder communities. This focus area demonstrates the USPTO's commitment to adapting IP policies to the rapidly evolving AI landscape and fostering inclusive participation in AI-driven innovation..

Takeaways:

• Monitor emerging AI-related IP issues
• Study the interplay between AI, economic activity, and IP policy
• Encourage inclusion in the AI innovation ecosystem.

Focus Area 2: "Build best-in-class AI capabilities" aims to build best-in-class AI capabilities by investing in computational infrastructure, data resources, and business-driven product development. This focus area encompasses several key initiatives:

Computational Infrastructure

The USPTO plans to:

• Develop and procure AI-ready computing resources that can scale across the spectrum of AI training and operational needs
• Prioritize cost-effective, modern cloud technologies to ensure resilience and adaptability to changing computational needs
• Maintain highly available infrastructure to support core agency functions

Data Resources

The strategy emphasizes:

• Stewarding data resources as enterprise assets
• Ensuring datasets are discoverable, up-to-date, transparent, and applicable for AI use cases
• Leveraging Open Data to foster AI innovation relevant to IP use cases

Business-Driven Product Development

The USPTO is focusing on:

• Integrating AI tools into trademark examination and design patent examination processes
• Continuously improving the effectiveness and reliability of agency AI systems
• Identifying new avenues for AI to empower employees and stakeholders

Sandbox Environments

The strategy includes:

• Maintaining on-demand sandbox resources for prototyping and evaluation of AI solutions across the USPTO
• Reducing barriers to launching new AI initiatives
• Encouraging broad-based, bottom-up exploration of AI solutions to business problems

By implementing these initiatives, the USPTO aims to enhance its operational efficiency, empower its workforce, and deliver value to stakeholders through advanced AI capabilities. This focus area demonstrates the USPTO's commitment to leveraging AI technology to improve its services and support innovation in the intellectual property landscape.

Takeaways:

• Advance computing and data resources for complex AI use cases
• Maintain sandbox environments for AI experimentation
• Leverage Open Data to foster AI innovation

Focus Area 3: "Promote responsible AI use" aims to promote responsible AI use within the USPTO and across the broader innovation ecosystem.

This focus area encompasses two main actions:

Action 3.1: Maintain public trust in USPTOs AI adoption

The USPTO plans to:

• Uphold equity, rights, civil liberties, and robust IT security practices in AI development.
• Clearly communicate the benefits and limitations of AI systems to stakeholders.
• Ensure value-aligned product development and risk mitigation.

Action 3.2: Monitor and address AI use in the innovation ecosystem

The USPTO is prioritizing:

• Understanding AI's role in legal practice.
• Encouraging responsible AI use by promoting IP awareness and compliance with IP laws and policies.

The USPTO emphasizes responsible AI use by IP practitioners, requiring ethical reviews of AI-generated content, protecting client data, and complying with transparency rules. Practitioners must be competent in AI tools, diligent in reviewing AI-generated documents for accuracy, and ensure patent claims align with the invention.

By implementing these initiatives, the USPTO aims to foster responsible AI use that maintains public trust, protects intellectual property rights, and supports innovation while mitigating potential risks associated with AI technologies.

Takeaways:

• Maintain public trust in USPTO's AI adoption
• Address AI's role in legal practice and IP compliance

Focus Area 4: "Develop AI expertise in USPTO workforce" aims to develop AI expertise within the USPTO workforce

through two main actions:

Action 4.1: Expand AI-related training for examiners

• Develop foundational AI curricula available to all examiners
• Ensure depth and recency of AI training offerings
• Attract and recruit candidates with AI skillsets in examiner hiring

Action 4.2: Empower workforce with AI expertise across diverse organizational needs

• Develop AI skillsets in IT, adjudication, legal services, and USPTO-wide resources
• Provide education on effective and responsible use of AI
• Offer AI training to each USPTO business unit, including PTAB judges

Key aspects of this focus area include:

1. Promoting AI fluency across the entire examiner workforce, not just those examining core AI technologies
2. Providing technical training to expand examiners' AI knowledge
3. Tailoring hiring goals to attract AI-skilled candidates
4. Leveraging the Biden-mandated AI and Technology Talent Task Force for recruitment
5. Developing curricula for a baseline level of AI fluency in both patent and trademark departments

The USPTO has already made progress in this area, with nearly 80% of patent examiners using AI-powered features across over 480,000 cases as of June 2024. Additionally, between January and May 2024, USPTO employees attended approximately 19 live presentations on AI-related technologies, with each presentation attracting an average of over 400 employees.

By implementing these initiatives, the USPTO aims to enhance its workforce's AI capabilities, ensuring that employees are well-equipped to handle AI-related challenges and opportunities in the intellectual property landscape.

Takeaways:

• Expand AI-related training for examiners
• Develop AI expertise across various USPTO roles

Focus Area 5: "Collaborate on shared AI priorities" aims to collaborate with other U.S. government agencies, international partners, and the public on shared AI priorities.

This focus area encompasses three key actions:

(1) Leverage the USPTO AI/ET Partnership:

• Gather diverse stakeholder perspectives to shape AI policies and refine strategies.
• Organize regular forums and roundtables to address emerging challenges and opportunities.

1. Promote interagency collaboration:

• Strengthen partnerships with academic institutions, industry leaders, and international organizations.
• Identify new opportunities to collaborate with government agencies..

(2) Collaborate with international partners:

• Participate in international standard-setting efforts to ensure U.S. leadership in global AI governance.
• Address AI matters impacting the global IP system.

Key aspects of this focus area include:

1. Fostering collaboration to drive advancements in AI innovation and policy alignment.
2. Funding AI research initiatives in partnership with universities.
3. Organizing AI-related engagements with experts and stakeholders from across the nation and the world.
4. Ensuring U.S. leadership in global AI policy and technological advancements.

By implementing these initiatives, the USPTO aims to strengthen its position in the global AI landscape, promote innovation, and address shared challenges through collaborative efforts.

Takeaways:

• Leverage the AI/ET Partnership for stakeholder input
• Promote interagency and international collaboration on AI and IP

Impact on Trademarks, Patents, and other Intellectual Property Rights

The USPTO's AI Strategy will have significant impacts on Trademarks, Patents, and other Intellectual Property Rights:

Trademarks:

• Integration of AI tools into trademark examination processes to improve efficiency.
• Exploration of AI capabilities to help brand owners enforce trademark rights, mitigate counterfeiting, and demonstrate authenticity of goods/services.
• Analysis of AI's implications for trademark law, especially regarding AI-generated content that replicates existing proprietary content or mimics individuals' identities (Name, Image, and Likeness).
• Assessment of whether current laws sufficiently address unauthorized AI-generated content and unfair competition issues.

Patents:

• AI-related patent applications have increased by 33% since 2018, appearing in 60% of all technology subclasses in 2023.
• Enhanced AI-powered tools for patent classification and prior art searches1.
• Addressing implications of generative AI on inventorship, subject matter eligibility, obviousness, enablement, and written description.
• Studying patent issues related to AI's potential role in the inventive process, including determining the patentability of AI-assisted inventions.

Other Intellectual Property Rights:

• Studying AI's implications for copyright law and policy, particularly regarding data ingestion and outputs generated by AI systems.
• Monitoring relevant copyright litigation in Federal courts and weighing in as appropriate.
• Examining AI's impact on trade secrets law and policy.
• Recommending potential policies and executive actions to address AI's impact on various IP rights.

These changes reflect the USPTO's proactive approach to leveraging AI while addressing the novel challenges it presents to the intellectual property landscape.

Takeaways for Legal Tech and IP Professionals

Key takeaways for Legal Tech and IP Professionals from the USPTO's AI Strategy include:

1. Stay informed about AI-related IP policies and practices, as the USPTO continues to develop guidance on AI's impact on intellectual property rights.
2. Leverage AI tools responsibly in IP practice, while being aware of the risks and ethical considerations.
3. Understand AI's role in legal practice and ensure compliance with IP laws and policies when using AI tools.
4. Be prepared for increased scrutiny of AI-generated content in patent and trademark applications.
5. Develop expertise in AI technologies and their implications for various IP rights, including patents, trademarks, copyrights, and trade secrets.
6. Anticipate changes in patent examination processes as the USPTO integrates AI tools for classification and prior art searches.
7. Monitor developments in AI-related patent applications, which have increased by 33% since 2018 and now appear in 60% of all technology subclasses.
8. Participate in USPTO's AI/ET Partnership and other collaborative efforts to provide input on AI-related IP issues.
9. Consider the ethical implications of using AI in legal practice, including duties of candor, good faith, and confidentiality.
10. Stay vigilant about data protection and confidentiality when using third-party AI systems for client matters.

Way Ahead!?

The USPTO's AI Strategy outlines several key initiatives for the way ahead:

1. Continuous refinement of AI policies and practices: There will be a need to monitor emerging AI-related IP issues and adapt policies accordingly. Further, it is crucial to study the interplay between AI innovation, economic activity, and IP policy .

2. Expansion of AI capabilities: Investment in AI-ready computing resources and data infrastructure will be a must. Like the startup ecosystem, developing and on-demand sandbox environments for AI experimentation can support the expansion.

3. Workforce development: The businesses needs to expand AI-related training for examiners and other USPTO staff. Try to attract and recruit candidates with AI skillsets

4. Collaboration and engagement: Leveraging the AI partnership to gather diverse stakeholder perspectives can prove to be a beneficial step. Working on strengthening partnerships with academic institutions, industry leaders, and international organizations can be helpful.

5. Responsible AI use: For the ecosystem to work efficiently, it is important to promote ethical considerations and best practices in AI adoption. Address AI's role in legal practice and IP compliance is further needed.

6. International leadership: Participation in international standard-setting efforts can be a good exposure.

These initiatives demonstrate the USPTO's commitment to adapting to the rapidly evolving AI landscape while fostering innovation and protecting intellectual property rights.

Recommendations for LegalTech and IP Professionals

While the USPTO's AI Strategy does not explicitly recommend changes for legal tech and IP professionals, it implies several key actions these professionals should consider:

1. Develop AI expertise relevant to IP practice, including understanding AI's impact on patent examination, trademark issues, and copyright considerations.
2. Stay informed about evolving AI-related IP policies and USPTO guidance, particularly regarding AI's role in inventorship, subject matter eligibility, and other patentability issues.
3. Implement robust data protection measures when using AI tools to safeguard client information and comply with confidentiality requirements.
4. Thoroughly review AI-generated content for accuracy, potential biases, and IP infringement before submission or use in legal practice.
5. Participate in USPTO's AI Partnership and other collaborative efforts to provide input on AI-related IP issues and stay updated on policy developments.
6. Consider the ethical implications of using AI in legal practice, ensuring compliance with duties of candor, good faith, and competence.
7. Explore AI capabilities to enhance IP enforcement, counterfeiting detection, and authentication of goods and services for clients.
8. Develop strategies for addressing AI-related challenges in trademark law, particularly regarding AI-generated content that mimics existing proprietary content or individuals' identities.
9. Prepare for increased scrutiny of AI-assisted inventions and AI-generated works in patent and copyright applications.
10. Leverage AI tools responsibly to improve efficiency in IP practice while maintaining human oversight and creativity

Impact on Global IP Practice

The global IP practice is being significantly reshaped by the rise of AI, impacting everything from legal frameworks to practical skills. As AI technologies increasingly use existing creative works for training, legal battles over copyrights and authorship are becoming more common, presenting new challenges for intellectual property (IP) rights. Legal and ethical considerations are now at the forefront, with questions arising about inventorship, copyright, and data privacy in AI-generated content. Ethical concerns also emerge as AI systems take on roles in IP enforcement, potentially leading to privacy infringements and biased decisions.

Different regions are adopting varying approaches to address these challenges. The EU has enacted the 2019 Copyright Directive and the AI Act, focusing on transparency and control over the use of copyrighted content in AI systems. The US approach is more fragmented, with no comprehensive federal AI legislation yet in place, but existing copyright laws and recent executive orders aim to manage the balance between innovation and protection. China views AI as a strategic priority, enforcing regulations that emphasize control over AI outputs and requiring substantial human involvement for legal protection of AI-generated works.

This evolving landscape necessitates that IP practitioners develop AI expertise to navigate the changing legal and practical aspects of IP law. They must also be aware of ethical considerations, including data privacy, security, and the balance between innovation and protection. The increasing number of AI-related patent applications globally will likely lead to more standardized approaches in drafting and examining these applications. Cross-border collaboration and harmonization efforts are crucial to address the global challenges and opportunities presented by AI in the intellectual property domain.

Download USPTO Artificial Intelligence Strategy here.

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