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May 17, 2023

Tread Carefully If Using AI Chatbots for Patent Activities

In adopting the use of artificial intelligence (AI) chatbots for an array of business functions, companies should give special attention to use cases that are particularly vulnerable to legal risks. One area of concern involves patent activities. By allowing the unrestricted use of AI chatbots, companies can experience events of public disclosure or improper inventorship, which can cause the loss of their patent rights or jeopardize the validity or enforceability of their patent rights. To help avoid this pitfall, companies should prepare chatbot policies that restrict or prohibit their employees’ use of AI chatbots in the areas of inventions and the patent process. 

AI chatbots can provide guidance for preparing a patent application. Notably, the chatbot’s replies include disclaimers, such as, “I am not a licensed attorney or patent agent.” As a test case for a fictitious invention, the author recently submitted the following request to a free, publicly available AI chatbot:

Will you write an independent claim for a US utility patent application for my invention? My invention is a warming system for electric bicycles. The system is electrically coupled to the battery power source of the bicycle. When the temperature drops below a certain level, the system automatically warms the seat and the handlebars.

In reply, the AI chatbot generated the following independent claim: 

  1. A warming system for electric bicycles, comprising:  
  • a temperature sensor configured to detect a temperature drop below a predetermined threshold;
  • a power source configured to provide electrical power to the warming system;
  • a seat-warming element electrically coupled to the power source and configured to warm the seat of the electric bicycle;
  • a handlebar-warming element electrically coupled to the power source and configured to warm the handlebars of the electric bicycle; and
  • a control unit electrically coupled to the temperature sensor, the power source, the seat-warming element, and the handlebar-warming element, wherein the control unit is programmed to: 
    • receive temperature readings from the temperature sensor; 
    • compare the temperature readings to the predetermined threshold; 
    • activate the seat-warming element and the handlebar-warming element when the temperature readings indicate a temperature drop below the predetermined threshold; and 
    • deactivate the seat-warming element and the handlebar-warming element when the temperature readings indicate a temperature rise above the predetermined threshold.

Generally, according to applicable patent laws, the patent rights in an invention are forfeited if the inventor publicly discloses the invention before filing a patent application or before the end of any grace period afforded by the law (e.g., 12 months). In this test case, the AI chatbot’s privacy policy and FAQs make it clear that the chatbot provider receives and stores the messages entered by the user unless the user adjusts the account settings or procures a premium version of the chatbot account. Therefore, fully describing an invention to an AI chatbot can be deemed a public disclosure that forfeits the patent rights or triggers the clock to initiate the applicable grace period. 

Also, as shown above, the chatbot’s claim has a number of features that the author did not describe, such as a control unit, temperature sensor, seat-warming element, and handlebar-warming element. Under applicable patent laws, the inventors for a patent application constitute all of the people who have conceived of concepts of the invention that are set forth in the claims of the patent application. In this test case, since the author did not conceive of these features, the listing of a sole inventor could result in improper inventorship. Accordingly and in future efforts to enforce the rights in the granted patent, competitors could challenge the validity or enforceability of the patent on the grounds of improper inventorship. 

Furthermore, using the chatbot’s claim in a patent application could have certain downsides. The chatbot’s claim includes limitations that could open the door to competitors’ design-around strategies. The claim positively recites the power source—potentially an unnecessary claim limitation. A competitor could potentially design around the scope of this claim by selling the warming system without the power source to a bicycle manufacturer or customer. 

Companies are rapidly implementing AI chatbots within their business functions across virtually all industries. For the reasons described above, in the areas of research, development, and innovation, it is important for companies to develop chatbot policies that safeguard against legal risks. With respect to patent activities, for example, policies may limit the use of AI chatbots to learning general information and education regarding the patent process. 

If you have any questions regarding the content of this blog, please contact Renato Smith, partner, at rsmith@barclaydamon.com, or another member of the firm’s Patents & Prosecution Practice Area. 
 

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