The Applicability of Existing Regulations as to Party and Practitioner Misconduct Related to the Use of Artificial Intelligence

The memorandum explains that existing USPTO rules, including the USPTO Rules of Professional Conduct and the signature certification in 37 C.F.R. § 11.18, apply to party and practitioner submissions regardless of whether artificial intelligence helped prepare them. It sets no new rule. It states that a signed paper must be reviewed by the person presenting it, and that simply assuming an AI tool is accurate is not a reasonable inquiry. Petitioners and patent owners (and applicants and appellants) before the PTAB remain fully responsible for the accuracy of every factual and legal representation, however a paper was drafted. Citing non-existent cases or misstating law or fact can lead to sanctions, including striking the paper, precluding an issue, affecting the weight given to the paper, or terminating the proceeding. Practitioners may also face disciplinary action, and knowing and willful violations can carry criminal liability under 18 U.S.C. § 1001. The memorandum rests on 37 C.F.R. §§ 11.18, 11.301, 42.6(a)(4), 42.11 and 42.12, and notes that § 11.18 is based on Federal Rule of Civil Procedure 11. WHAT IT DOES: Explains that existing rules apply regardless of how a submission is generated. Signing a paper certifies that statements of the party's own knowledge are true, that statements on information and belief are believed true, that legal contentions are warranted, and that factual contentions have evidentiary support, after a reasonable inquiry. Any signed paper must be reviewed by the person presenting it. The reasonable inquiry is context-specific and can include ascertaining how the paper was prepared, determining whether errors or omissions were introduced, and verifying all factual and legal representations. Simply assuming an AI tool is accurate is not a reasonable inquiry. Practitioners may not assert or controvert an issue without a basis in law or fact. A paper that misstates facts or law could be treated as presented for an improper purpose because it could cause unnecessary delay or needless cost. Listed sanctions include striking the paper, precluding a party or practitioner from submitting a paper or presenting or contesting an issue, affecting the weight given to the paper, and terminating the proceedings. It also notes possible disciplinary action and, for knowing and willful violations, criminal liability under 18 U.S.C. § 1001. WHO AND WHEN: Addressed to the Patent Trial and Appeal Board, the Trademark Trial and Appeal Board and the Office of the General Counsel, and dated February 6, 2024. It covers parties and practitioners appearing before the PTAB and TTAB and making submissions to the USPTO. It sets no separate effective date because it applies existing rules. It says the USPTO will publish a Federal Register notice over the coming months with more guidance on how the existing rules apply to AI tools. KEY QUOTE: "Simply assuming the accuracy of an AI tool is not a reasonable inquiry." (p. 4) EARLIER GUIDANCE AFFECTED: None identified in the document. It states that the forthcoming Federal Register guidance will control in the event of any conflict with this Memorandum. PRACTICE TIP: Personally review and verify every factual statement, citation and legal argument in any paper you sign, including AI-assisted drafts, before filing, and do not rely on an AI tool's output without checking it. Issued by Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.