As a teenager growing up in the 1970’s, and then later on, at engineering school in the early 80’s, written exams were a common feature of school life. I didn’t especially like writing essays or explaining things, so high school English Literature and History were really not my forte and I was glad to continue on to engineering, where pretty much everything was represented by lines and numbers and yes, formulae (that’s not a typo; the plural of formula is formulae).
Showing Proof is Showing Comprehension
The need to learn and prove formulae was definitely one of the most challenging aspects of my studies in engineering, but one of the most rewarding, too. For the development of mathematical expressions in a written test, showing why they are the way they are, is not simply remembering something by rote. Rather, it’s a way of communicating that I understand. I understand that when considering the strength of a horizontal reinforced concrete beam I have to know about the tensile strength of steel reinforcing bars, the compressive strength of concrete and moments of inertia. When planning a structure, heaven help us(!) if the engineer only knows how to insert a question into a software tool but doesn’t really understand the answer. And even more so, if that software isn’t simply to accelerate complicated calculations but is actually an AI tool into which we insert the basic problem and hope that the answer given to us is right. For an engineer should be able to comprehend the answer, consider whether it looks or feels right, and to be able to conclude whether there are additional factors that he or she may have forgotten, and then redo the calculation.
So, I hear you asking, if an engineer is able to look at a result and to see if it looks or feels right based on experience, why should the use of AI tools be a cause for concern? Moreover, what on earth does this have to do with Patents?
AI – Losing Control of the Solution
In an article in Forbes® Magazine dated December 18, 2024, entitled The Dark Side Of AI: Tracking the Decline of Human Cognitive Skills, Chris Westfall discusses the way that over-reliance on AI tools “may be contributing to a decline in critical thinking skills”. Without belaboring the point here, it is clear that when human beings are no longer able to think problems through and to understand processes, it is not just a matter of disconnection from the problem, but a loss of control of the solution. There’s a lot to say about this, but here is not the place.
The Responsibility of being a Patent Attorney
So why bring it up at all? Quite simply, because the work that we, as Patent Attorneys, do, forms part of the fabric of society. No less. The patent applications that we draft and then prosecute through to registration, help to regulate the flow of creativity from the human intellect and into the everyday lives of the men, women and children that make up the very socio-economic existence of people in every corner of the world.
Patent Attorneys are the link between inventors and the various patent offices around the world. In essence, we mediate between those who seek to introduce their inventions into the markets and require patents to prevent others from copying those inventions, and Patent Examiners who are tasked with regulating the issuance of those patents so as to ensure that only inventions intended by the legislator to be available for such monopoly control are, in fact, patented.
Claims Crafting
I am the first to admit that it is reasonable and time saving to submit queries to AI engines in natural language. I do it every day. However, I do not see how it can be reasonable, for example, to submit a disclosure to an AI tool for it to produce claims; claims which require an understanding not just of the invention but of the inventor’s wishes; claims which, when challenged by an Examiner, require not merely an ability to draft distinguishing arguments, but an ability to talk to the Examiner, to understand why he or she issued a specific rejection, how to resolve the rejection and, sometimes, how to make a personal connection with the Examiner which will make it easier to reach mutual understanding. In some cases, making a personal connection may engender an understanding on the Examiner’s part as to the claims coverage that your client wants, following which the Examiner may advise you as to what needs to be done, whether by providing more data or by ‘tweaking’ claims language. If we, as Patent Attorneys, have not drafted the claims, and thus do not own them, such a ‘conversation’ becomes significantly more difficult, to the extent that we may be unable to assist our clients in reaching their goals.
The Disclosure is More than Mere Support for the Filed Claims
On the above premise, namely, that human understanding which goes beyond simple knowledge is required to draft and to discuss claims, a similar premise should reasonably apply to the disclosure. Even if one does not take into consideration the best mode requirement, the function of the disclosure is not solely to provide support to the invention strictly as claimed. Very often it is used to provide support for alternative claims that may not necessarily have been included in an application as filed. Such alternative claims may not have been included initially for the reason that they are not necessarily the first choice claims, but would be better than nothing if the preferred claims are deemed not to be allowable.
As known, especially in the US, the Supreme Court has been known to move the goalposts in a way that influences tens of thousands of applications in active prosecution. (The Alice-Mayo case is but one example of this). Therefore, an ability to maneuver mid-prosecution may require the inclusion in the disclosure of additional subject matter that is not required for the claims as first filed, but is definitely required for new or amended claims added during examination of the application.
In conclusion, I can hear many who will listen to my protests, remarking that I am tilting at windmills; that I will be no more successful in preventing our being swamped by AI than the legendary King Neptune was in trying to prevent the tide coming in.
I know that anything that we think we may have seen of the capabilities of AI is only the tip of the iceberg. As a Patent Attorney, it is my belief that we have a duty to our clients to keep our own, very human intellect involved in assisting them.
And finally, as a human being, each of us has a responsibility to the rest of humanity not to become so reliant on AI that we stop being human.
