web featured image tech law letter

In This Edition

  • USPTO on AI | Guidelines for Use of AI Before the United States Patent and Trademark Office
  • "Rock Star" v. "Rockstar" | Court Strikes Down Argument Against "Striking Similarity"
  • Watch Webinar Recording | Copyright & Trademark Basics: Shields to Protect Your Brand


Guidelines for Use of AI Before the United States Patent and Trademark Office

The Established Duties Still Apply When Using AI

Robert J. Kenney

As anticipated, the use of AI in searching, creating content, drafting applications and related documents, legal research and drafting legal memos, performing due diligence analysis, extracting legal principles from court opinions, drafting arguments and legal briefs and assisting in deposition preparation is on the rise in matters before the United States Patent and Trademark Office. AI use can offer practitioners significant efficiencies in their practice as well as notable cost savings to clients. The USPTO recognizes the capabilities of AI tools continue to grow and has stated no prohibition against using them in drafting documents for submission. Nor do practitioners have any obligation to disclose to the UPSTO when one or more AI tools have been used in preparing such submissions. However, practitioners should be aware that blind reliance on the accuracy of AI-generated content can lead to potentially significant sanctions.

On April 11, 2024, the USPTO published “Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office.” (Federal Register, Vol. 89, No. 71, at page 25609). The aim was to provide parties practicing before the Office with guidelines relating to the use and reliance on AI tools when preparing submissions to the Office. Specifically, the guidelines reminded practitioners that “applicants, registrants, practitioners, parties to proceedings and others submitting papers to the USPTO are reminded of the related USPTO policies and duties to the office and clients (if applicable) when using these computer tools.” This statement makes it clear that existing duties of candor, disclosure and reasonable inquiry as to the accuracy of factual and legal statements and arguments before the office apply. Simply put, the person making the submission cannot blindly rely upon the AI generated statement, argument legal citation, etc., without conducting a reasonable inquiry into the accuracy of such statement, argument, legal citation, or other submission.. In this regard, no new obligations, rules or duties were created for submissions which contain AI-generated content. Rather, the existing duties apply.

One source of this duty comes from the requirement that nearly all submissions to the USPTO require a signature of the person making the submission. This includes documents that were drafted entirely by AI tools or drafted with the assistance of AI tools. When submitting a document to the USPTO, whether by signing, filing, submitting, or later advocating for any paper, a party certifies that “all statements to the party’s own knowledge are true and that party performed an inquiry reasonable under the circumstances. In order to obtain the knowledge necessary to make these certifications, the party presenting the paper must have reviewed and verified the paper and its contents.”

These guidelines make it clear that solely relying on the accuracy of an AI tool is not a reasonable inquiry and all papers submitted, whether generated in whole, in part, or without any input from an AI tool must be reviewed by the submitting party. Because of the potential for AI systems to omit, misstate, or even “hallucinate” or “confabulate” information, it is incumbent on the party making a submission to ensure all statements are accurate to their own knowledge and made based on information that is believed to be true.

The Guidelines offer some helpful examples of both the duties required for submission to the USPTO and the nature of the reasonably inquiry required to meet those duties.

In the context of a response to a patent examiner’s Office action, for example, where the applicant uses an AI system to draft all or a portion of the response, the party “should review the response, including checking the accuracy of the citations, and ensuring the arguments are legally warranted.”

Further, any party involved in a matter before the USPTO has a duty of candor and good faith, and therefore may be required to disclose certain known facts to the USPTO. For example, in patents and patent applications, all patent claims “must have a significant contribution by a human inventor.” Therefore, if an AI system is used to draft patent claims and one or more of those claims do not include significant contributions by a human inventor, the duty of candor requires the party to disclose that fact.

Complete reliance on AI to satisfy the applicant’s requirement to cite known relevant prior art to the patent office in an Information Disclosure Statement (IDS) without review can also lead to a violation of the rules if the AI-generated prior art includes large numbers of cumulative and irrelevant submissions. The party submitting the IDS must sign that document, 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 the applicable patent office rules. Failure to do so can result in a finding that the filing was submitted for an “improper purpose because it could cause unnecessary delay or needless increase in the cost of any proceeding before the USPTO.

The Takeaway

In the trademark context, any submissions generated in whole or part by AI systems must be “carefully reviewed prior to filing to ensure that the facts and statements provided are true and have appropriate evidentiary support,” consistent with the applicable rules. This applies to any filing in the USPTO, including submissions to the Trademark Office Trademark Trial and Appeal Board.

The Guidelines note that “particular care should be taken to avoid submitting any AI-generated specimens, which do not show actual use of the trademark in commerce or any other evidence created by AI that does not actually exist in the marketplace.” Any AI-generated material that includes inaccurate information, irrelevant material or includes unnecessarily cumulative material may be construed as a paper presented for an improper purpose because it could cause unnecessary delay or needless increase in the cost of any proceeding before the USPTO.

The Guidelines provide a clear message: AI, while potentially helpful to practitioners, does not replace the requirement for human review or absolve the party making any submission to the USPTO from the obligation to ensure its accuracy and relevance.


Court Strikes Down Argument Against "Striking Similarity"

Timothy J. Lockhart

The U.S. Court of Appeals for the Fifth Circuit upheld summary judgment against a copyright plaintiff who claimed that he need show only “substantial similarity,” not “striking similarity,” between two works even though he failed to prove that the band Nickelback had access to his song “Rock Star” when creating its song “Rockstar.” Johnston v. Kroeger, No. 23-50254, 2024 WL 668474 (5th Cir. Feb. 19, 2024) (per curiam).


Kirk Johnston, a musician and songwriter who has been a member of the band Snowblind since 1997, created the song “Rock Star” (listen here) in 2001 and registered his copyright in the song with the U.S. Copyright Office. Nickelback released its song “Rockstar” (listen here) in 2005.

In 2020 Johnston sued Nickelback for copyright infringement, avoiding the Copyright Act’s three-year statute of limitations by claiming that he was unaware of Nickelback’s song until 2018. The court of appeals dryly observed that although at the summary judgment stage it had to accept Johnston’s claim as true, the court found the claim an “odd contention, considering how popular the Nickelback song was.”

The court said that to establish a claim for copyright infringement, a plaintiff must show (1) ownership of a valid copyright; (2) factual copying; and (3) substantial similarity (citing Armour v. Knowles, 512 F.3d 147, 152 (5th Cir. 2007) (per curiam)). Where a plaintiff lacks direct evidence of copying, factual copying may be inferred from “either a combination of access and probative similarity or, absent proof of access, striking similarity” (quoting Batiste v. Lewis, 976 F.3d 493, 500, 502 (5th Cir. 2020)).

To establish access, the court said, a plaintiff must prove that the person who created the allegedly infringing work had a reasonable opportunity to view or hear the copyrighted work before creating the infringing work” (citing Armour, 512 F.3d at 152–53). The court said Johnston had failed to do so in view of his claims that (1) relevant music executives likely attended a particular Snowblind show; (2) Nickelback’s management group likely attended another Snowblind show; (3) Nickelback and Snowblind were “moving in relatively the same circles” when they were searching for record-label deals; (4) Nickelback routinely used music ideas from third-party bands; and (5) Johnston made significant efforts to publicize his music in the early 2000s. The court held that Johnston’s relatively weak claims were insufficient to infer access, “especially in the face of testimony from Nickelback members and relevant executives that they had never heard of Johnston’s song.”

Given that Johnston had failed to prove access, the court said, he had to establish factual copying by showing “striking similarity” between Nickelback’s song and his (citing Batiste, 976 F.3d at 504). Such a showing required demonstrating that the alleged similarities were of a kind that could be explained only by copying, not by coincidence, independent creation, or prior common source (citing Guzman v. Hacienda Records & Recording Studio, Inc., 808 F.3d 1031, 1039 (5th Cir. 2015)).


The court held that Johnston had also failed to make such a demonstration. An expert witness for Johnston opined that the hooks of the parties’ songs are strikingly similar, pointing to the “clear lyrical similarities” between the two hooks: “Gonna be a rock star someday” in Johnston’s work and “Hey, hey, I wanna be a rockstar” in Nickelback’s work. But the court noted that “several other Nickelback songs and other songs in the rock genre share the same similarities.” Johnston’s expert also testified that the lyrics of both songs contain common themes such as “making lots of money,” “connections to famous people,” and “references to sports.” The court said that “these broad categories are mere clichés of being a rockstar that are not unique to the rock genre” and noted that whereas Johnston’s song mentioned a particular pro football team, Nickelback’s song tangentially mentioned baseball—“different sports in different contexts,” according to the court. “Put another way,” the court said, “these two songs are simply not sufficiently similar.”

The court rejected Johnston’s argument that the proper test for infringement was substantial similarity, not striking similarity. The court said that “[t]he substantial similarity analysis applies only after a plaintiff establishes factual copying and is thus irrelevant here” (citing Batiste, 976 F.3d at 506). The court also rejected Johnston’s argument that the district court erred by considering all versions of the songs rather than the “stripped down” versions. The court noted that Johnston had provided no support for this argument, having cited only cases comparing certain portions of works under the substantial similarity test. Therefore, the court said, the district court did not err by considering all versions of the songs in the record.

Accordingly, the court upheld the district court’s grant of summary judgment in favor of Nickelback. This decision illustrates the point that to be a rock star in copyright litigation, a plaintiff must prove that the defendant had access to the allegedly infringed work or demonstrate striking similarity between that work and the allegedly infringing work.



COPYRIGHT & TRADEMARK BASICS: Shields to Protect Your Brands


Webinar: Copyright & Trademark Basics

Presented on April 9th by IP attorneys Tim Lockhart and Bob Kenney, this session will focus on the essential principles of copyright protection, including tips on contract drafting and default copyright ownership, and those of trademark registration, maintenance, and renewal.

Placing particular emphasis on the importance of brand selection, building, and enforcement, the information provided in this session will be useful to business owners and senior managers who need to have a working knowledge of what to do—and what to avoid—with respect to copyright and trademark basics.

The Willcox & Savage, P.C. website is for informational purposes only and should not be treated as legal advice. Neither reviewing the website nor corresponding with us through the website will create an attorney-client relationship between you and the firm. An attorney-client relationship and a corresponding duty to maintain confidentiality do not arise until Willcox & Savage, P.C. has determined that no conflicts of interest exist and has informed you that it is willing and able to represent you. Do not send confidential information or substantive details about your case or transaction to us until you speak with one or our attorneys and receive authorization. Information we receive will not be treated as confidential until we establish an attorney-client relationship with you and authorize you to send us confidential information.

By hitting "Agree" below, you agree that you have read and accept these terms.