Build a prior-art table for novelty and the duty of disclosure
Key facts
- Human involvement
- YellowClose supervision
- How AI is used
- From the references the lawyer supplies, record the publication date, the effective filing date used, and the feature the reference is said to show, with a pin. Call nothing prior art.
- What the lawyer must review
- You decide what is material and what is disclosed to the Office. 35 U.S.C. § 102(a) treats as prior art a claimed invention that was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date, and certain earlier patent filings that name another inventor. Section 102(b) states the one-year exceptions. 37 CFR § 1.56: each individual associated with filing and prosecution must disclose information known to be material to patentability. The USPTO's 11 April 2024 guidance: AI output is checked before it is filed, and use of an AI tool is disclosed if it is material under § 1.56(b).
- Written for / version
- United States versionUS
Who does what
| Role | What they do |
|---|---|
| Assistance | Do not begin AI assistance until the responsible lawyer has defined and confirmed its permitted scope. |
| Lawyer | Set the scope, supervise the work closely, verify every part relied on, resolve omissions and exceptions, and approve the exact output. |
Checklist
- Check the current court or regulator requirements, prescribed form and attachments for the intended document and filing.
- Confirm the output against the client’s instructions and the complete relevant source material, including omissions or contradictions.
- Resolve exceptions and record the responsible lawyer’s approval of the exact output and intended use.