Voice of IP
Clause 8
Exclusive: USPTO AI Co-Chairs Reassure Stakeholders on Guidance & Share Journey of Shaping USPTO's Approach to AI
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Exclusive: USPTO AI Co-Chairs Reassure Stakeholders on Guidance & Share Journey of Shaping USPTO's Approach to AI

Jerry Ma & Charles Kim tell story of co-chairing USPTO's AI working group - sharing insights on USPTO's AI tools guidance, applying §101 for AI-related inventions, and leveraging AI for examination.

For leaders of artificial intelligence (AI) initiatives at the USPTO, success hinges on one guiding principle: cross-disciplinary collaboration.

This comes from this week’s Clause 8 guests, Jerry Ma, Director of Emerging Technologies and Chief AI Officer, and Charles Kim, Deputy Commissioner for Patents. Together, the two co-lead a group working on AI efforts and according to Jerry are focused on “a human first vision for AI at the agency.”

Charles Kim (left), Deputy Commissioner for Patents and Jerry Ma (right), Director of Emerging Technologies and Chief AI Officer

In the episode, host Eli Mazour explores how Jerry and Charles led USPTO’s efforts to deal with AI advancements on the policy front & leverage AI technology to improve USPTO’s own operations before ChatGPT was even a thing. The two leaders come from diverse backgrounds—Jerry with deep experience in Silicon Valley’s tech sector, and Charles with decades of IP and regulatory expertise at the USPTO.

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Selected Topics

  • Start of USPTO’s AI working group, originally co-chaired by Charles Kim and Deputy Director Coke Morgan Stewart, to tackle §101/patent eligibility issues related to AI

  • Expansion of AI working group to coordinate AI related activities across the USPTO, including exploring leveraging AI technology for patent examination

  • Jerry Ma’s story of joining the USPTO from Silicon Valley to be Director of Emerging Technologies and taking on role as co-chair of working group

  • How AI implementation at the USPTO relies on cross-disciplinary teams drawing expertise from law, technology, and policy

  • Working groups’ efforts to engage with outside stakeholders through the AI/ET Partnership Series to create informed policies around AI and patent eligibility

  • USPTO’s guidance on (1) use of AI-based tools, (2) AI-assisted inventions, and (3) AI subject matter eligibility and responses to related push-back

  • USPTO’s current use of AI technology & future plans to further leverage AI technology to empower examiners

  • Role of AI working group as AI becomes widely used within USPTO

  • Advice for other organizations exploring implementation of AI

Notable, Quotable

On the USPTO’s AI Guidance

“If there is information that's material to patentability, there is a duty to disclose that information. But the use of AI tools by itself is not something that we're requiring in terms of disclosing the use of those tools.” - Charles Kim

On cross-collaboration at the USPTO

"There's an underlying humility that none of us know all the answers…these areas are just too complex for any individual or any individual skill set to be able to tackle alone." – Jerry Ma

“There's a truly cross-disciplinary effort between folks on the technology side, folks on the policy and examination side, everything in between, to figure out how can we get the substance right." - Jerry Ma

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Voice of IP
Clause 8
The podcast listened to by sophisticated in-house counsel, judges from around the world, IP policymakers, senior USPTO officials, and top patent dealmakers and attorneys to stay ahead of the curve by understanding the personalities and forces shaping IP.
Eli Mazour’s love of talking to people – along with his belief in the importance of America’s patent system – led him to start Clause 8. Clause 8 features conversations that provide strategic insights about how to best deal with various patent-related issues. Some of the previous guests include America’s great innovators, federal judges, USPTO Directors, top IP staffers on Capitol Hill, and Carole Baskin’s attorney from the documentary Tiger King.
It's the #1 podcast about IP and is in the top 2.5% of all podcasts according to Listen Score. The podcast has been covered and cited in many publications, including Bloomberg, Law360, Courthouse News Service, Above the Law, IAM, and Original Jurisdiction.