Last week, the US Patent and Trademark Office issued guidance asking that lawyers submitting patent applications limit the number of references cited in the filing as constituting “prior art;” prior art refers to older inventions that should be considered in the patent review process.  Lawyers tend to cite all plausible prior art that could affect the novelty of the proposed patent, so that the subsequent grant of a patent after such disclosure is less subject to attack by a prior inventor claiming infringement.

AI is being used by attorneys filing patent applications to find and cite larger numbers of prior art; the theory is that such inclusion benefits client patent applicants and also meets the requirement that lawyers fully represent their client.  There therefore is a tension between applicants and PTO reviewers who seemingly are overworked or slowed down by so many references to prior art.

There is a tinge of “pot calling kettle black” on the part of the PTO, which itself is using AI to check prior art.  It takes a brave lawyer to omit a reference, although lawyers are required/expected to cull such references for applicability; and, applicants should be in favor of a maximal list (although they are harmed by processing delays).  Maybe more examiners?  Costs money–and although in fact the PTO also has increased filing fees based on number of references, the maximum fee of $800 per application remains seemingly modest.

Can we envision patent applications and patent review  being “assigned” to AI without human intervention?  I hope not to be practicing when two AI programs argue infringement in a proceeding being conducted by yet another AI-driven computer…..