ChatGPT is a large language model launched by OpenAI. From its query-based interface, ChatGPT can answer questons, write essays and poetry, and even have a dialogue with a human user. What is remarkable about this AI model is that it can generate cogent and human-like text. (1)
In the field of intellectual property, ChatGPT have caused a great deal of concern, mostly surrounding copyright issues. (2) However, as a patent atorney, it would be natural for us to feel threatened by the advancements in technology, especially when it comes to AI language models like ChatGPT. The fear of losing the job to AI tools is a valid concern, but since technologies are double-edged swords, instead, ChatGPT offers something even more valuable to patent professionals – an indispensable tool to enhance their legal work.
So how can ChatGPT assist patent atorneys? We test some scenarios and provide our thinking as follows.
PATENT DRAFTING
Patent drafing is the basic and daily work of patent atorneys. One simple understanding is that AI tools like ChatGPT could help capture errors in patent filings, such as antecedent basis and misused reference numbers, and could improve the quality of patent applicatons.
But would that be its ultmate limit? We drafed a claim for a cup with a few errors on purpose to test its further capabilites. The result is that ChatGPT made claim amendments and stylistc improvements, but did not address the issue of creatng a Markush group using “comprising” instead of “consistng of” , which as we believe should use more human “brain” .
Then we jumped to a further level to check whether ChatGPT could actually draf a general claim. The answer is “Yes” . For example, we asked ChatGPT to “Write a patent claim for an electrical connector with the gist of inventon being a two-stage latch” and it gave us:
“An electrical connector comprising:
· a first connector housing having a plurality of contact pins;
· a second connector housing having a plurality of contact sockets arranged to mate with the contact pins of the first connector housing; and
· a locking mechanism configured to secure the first and second connector housings together in a mated positon, wherein the locking mechanism comprises a two-stage latch comprising:
· a first stage latch that engages with a corresponding receiving structure of the second connector housing when the first and second connector housings are partally mated; and
· a second stage latch that engages with a corresponding receiving structure of the second connector housing when the first and second connector housings are fully mated.”
*By the way, we asked ChatGPT to translate the above claim into Chinese language, and obtained a decent translaton.
Afer drafing the claim, ChatGPT reminded me that: “Note: This is just an example and not intended to be an actual patent claim. A patent atorney should draf a patent claim based on the specific features and inventons of the electrical connector.”
When reviewing the claim, we find the claim generally looks good, but at least two issues exist:
- The claim fails to define any novel and non-obvious feature. That is to say, the claim apparently belongs to the prior art. This is mainly because that ChatGPT was not trained on data up to 2021 – it can only look backward in tme. It would be perfectly fine to draf good claims about past inventons, but asking it to specify a novel inventon in claim language may cause the model to make errors. To improve this and move closer to a useful claim, we need to include more informaton about the potentally novel features.
- However, that leads to the second issue. Providing such kind of additonal details might consttute a disclosure of the inventon to a third party (OpenAI) that is under no obligaton to keep it confidental. (3) In this situaton, such actvites may inadvertently create a bar to patentability. As such, patent atorneys must take care not to disclose the client’ s confidental informaton to ChatGPT.
Regarding the patent specificaton, we use the above claim as a seed to ask ChatGPT to provide an inital patent specificaton. In this regard, ChatGPT provides a relevant ttle, field of the inventon, background, summary, and a brief, but reasonably complete, detailed descripton. Such outputs could potentally be used as a base template or an outline to draf a more complete patent specificaton.
It can be seen from the above that, even with some concerns or issues, ChatGPT has the potental to reduce drafing work for patent atorneys by rapidly providing candidate patent claims and corresponding specificaton. This may give patent atorneys more tme to focus on the creatve aspects of patent legal practce.
DESIGNING-AROUND
As a patent atorney, how to design-around a patent claim is the advice that we ofen provide to our client.
In order to test ChatGPT in this aspect, we asked ChatGPT to provide design-around optons for the electrical connector claim above and it responded:
“Sure, here are some design-around optons for the electrical connector claim:
1) Use a different type of locking mechanism: Instead of using a two-stage latch, a different type of locking mechanism can be used to secure the connector housings together, such as a screw or snap-fit mechanism.
2) Modify the shape or orientaton of the connector housings: Changing the shape or orientaton of the connector housings and contact pins/sockets could create a unique matng patern that does not infringe on the patented design.
3) Change the design of the first and/or second stage latch: Altering the design of the first and/or second stage latch so that it operates differently than described in the patent claim may also be a potental design-around opton.
4) Incorporate additonal features or components: By adding additonal features or components to the electrical connector that do not exist in the patented inventon, a sufficiently different overall structure can be created that avoids infringement.
5) Use a different material or constructon: Using a different material or constructon method for the connector housings, contact pins, and contact sockets may also provide a design-around opton.”
The results are mixed – not very ideal. ChatGPT provided some good suggestons for example – “Use a different type of locking mechanism: Instead of using a two-stage latch” . However, it also provided some optons that were not actually design-around, such as adding more features to the claimed connector without changing any existng features.
Through our testng, it is obvious that ChatGPT knows basic principles in determinaton of patent infringement such as all-elements rule. But ChatGPT currently cannot extract the key features from the claim, thus cannot provide design-around optons which would be more effectve. In another session for designing-around a claim regarding a sensor structure, ChatGPT gave us a non-infringing soluton but that would not work – that is another issue.
In view of the above, just like ChatGPT said itself: “These (design-around optons) are just general suggestons and may not be applicable or feasible in every situaton. A design-around strategy should be developed based on a thorough analysis of the patent claim and the specific requirements of the product or applicaton. It’ s recommended to consult with a patent atorney to ensure that any design changes do not infringe on other existng patents or intellectual property rights.” But we should realize that ChatGPT’ s suggestons have at least broadened our thinking.
PRIOR ART SEARCH
We further wonder that if ChatGPT can conduct prior art search based on patent claims, therefore, we stll rely on the electrical connector claim above to request ChatGPT to provide prior art documents to affect the patentability of the claim. ChatGPT refused us by saying: “I am an AI language model and do not have access to a database of patent documents” but turned to suggest some search strategies which seem to be known to qualified patent atorneys.
We changed our queston into “Please search for patent publicatons which may be relevant to the inventveness of the claim” – this tme it responded:
“Here are some patent publicatons that may be relevant to the inventveness of the claim:
· US Patent Publicaton No. 2019/0071392: Electrical connector with two-stage locking mechanism;
· US Patent Publicaton No. 2017/0278275: Electrical connector with two-stage lock and release mechanism;
· US Patent Publicaton No. 2016/0088689: Two-stage locking electrical connector; and
· CN Patent Publicaton No. 108647759A: Two-stage locking mechanism for electrical connector.”
We checked these four patent publicatons and found they are really relevant to the claim and probably destroy novelty/inventveness of the claim. However, it would be too early to conclude that ChatGPT has good capability in patent searching since the electrical connector claim above may be too general such that relevant prior art documents would be easily found.
Then, we think we may use a granted patent claim to test ChatGPT in validity search since it is in real scenarios. We randomly identfied a granted EP patent EP3479660B1. The patent has been granted and survived in an oppositon proceeding (4) – thus the claims are believed as being solid. According to the oppositon decision, the inventve feature in claim 1 in view of the prior art documents lies in at least “each electrical connecton having a predetermined current flow distance”. Based on the above informaton, we asked ChatGPT to search for patent publicatons which may be relevant to the inventveness of the patent claim1 and published earlier than the priority date of 30 June 2016, especially disclosing the above feature. ChatGPT gave us:
· US Patent No. 9,150,295: Apparatus for processing a fluid and method for using same;
· US Patent No. 8,822,051: Method and apparatus for uniform electric field generaton using a conductor array for electroporaton treatment planning;
· US Patent No. 9,261,212: High voltage electrode array and methods of use thereof; and
· US Patent Publicaton No. 20120181229: Electrode assembly for high-throughput cell transfecton and electroporaton systems including same.
However, none of these four patents or publicatons had anything to do with the required key feature “each electrical connecton having a predetermined current flow distance”. Some of them are even irrelevant to the subject mater of the claim. Thus, it appears that ChatGPT is not so reliable in validity search for a granted patent claim, let alone the validity assessment of the patent, which is subject to strict review.
With that said, ChatGPT could stll be considered as a potentally helpful – though currently not very reliable – tool for patent atorney in prior art searching. In the future, it can be believed that the ChatGPT-Assist search would show its capabilites and help patent atorneys to obtain the useful prior art effectvely and accurately.
OTHERS
Limited by the complexites on various elements, we did not test other scenarios. However, though not tested, we believe ChatGPT could assist patent atorneys at least in some additonal ways:
· Legal research: ChatGPT has the potentality to assist with legal research by finding relevant case law, statutes, and regulatons related to patent law; and
· Office Acton response: This is probably a more advanced feature, but ChatGPT could speed up retrieving the relevant prior art and case law cited in Office Actons since examiners have different commentng and rejectng styles that a GPT model could probably navigate effectvely.
SUMMARY
In conclusion, although the integraton of AI tools like ChatGPT into the patent atorney’s daily work can have some influences on the speed and accuracy of the work, it is stll important to remember that ChatGPT is not a substtute for an experienced patent atorney. It should be a tool to be used in conjuncton with the expertse and knowledge of patent professionals, which then can offer the best of both worlds, help to streamline the patent work process, save tme and ultmately produce quality work results. It is stll the brains, the expertse and the experiences of patent atorneys that can be relied on to provide truly enhanced legal work.
References
1) ChatGPT-4 Platorm – Open AI;
2) ChatGPT and the Underlying Copyright Malady – by Spicy-IP March 10, 2023;
3) Can ChatGPT replace a patent lawyer? – Michael Borella – IAM Media March 02, 2023;
4) Global Dossier through EPO for all documents of European Patent EP3479660B1