Marc Kaufman typically needs 20 hours to create one patent application for a software innovation. But the Washington-based patent attorney says he’s saving valuable time with a little high-tech help.
Kaufman, a partner at Rimon PC, has been using an artificial intelligence tool called Specifio that analyzes claims—words that define an invention—and generates a bare-bones draft with a description and illustrations in a couple of minutes. He says the tool he started using six months ago has given him five extra hours to fine-tune his clients’ applications to boost their likelihood of approval.
“Saving hours allows me to really understand the client’s business and be very strategic with the patent application, while coming in at a price that clients are willing to pay,” Kaufman said.
AI-based drafting tools are slowly taking hold in patent practices that are looking for greater efficiency in patent prosecution work. Attorneys say the cost-effective tools, some of which have rolled out in the last 18 months, are driving law firm and client interest, although they haven’t been widely adopted because of their limitations and unresolved questions about their effectiveness.
While AI can automate tasks and detect patterns in text and data, it’s not yet sophisticated enough to write claims that capture the essence of an invention in an application—only attorneys can do that. There also isn’t one AI service that can draft a patent application for all types of inventions.
Non-AI technology, such as applications that help proofread and format applications, are more common in law firms, but AI is being closely watched as a tool of the future.
“You have to be looking at the tools if you want to be around in 20 to 30 years,” San Francisco-based Hogan Lovells US LLP partner Jason Lohr said. “Clients are most interested because they’re hoping it would reduce the cost.”
Where AI Fits
Specifio, the tool Rimon’s Kaufman uses, takes claims written by an attorney and generates a first working draft that attorneys edit and refine further. It only works for software inventions.
Other AI tools on the marker include TurboPatents’ RoboReview, which analyzes inventions in an application by an attorney, and determines whether the invention is novel in light of prior inventions.
Hogan Lovells isn’t using AI tools, Lohr said, though they may work for follow-on applications for a specific addition or change to a patented invention. The AI could leverage the original application written by an attorney to generate a draft for a follow-on, he said.
Lohr said AI-based tools could work for utility-model patents that tend to have less stringent description requirements and don’t need a patent examiner’s approval to be granted. “In places like China, where they use utility models with basic filings, I can see it having a lot of use there,” he said.
Other attorneys said AI drafting tools on the market now just don’t offer what they need. Joel Lehrer, a Boston-based partner at Goodwin Procter LLP, said there’s no tool that can help his venture capital-backed startup clients in the technology and life sciences industries. He said he has to predict any potential change in direction in his client’s emerging business and then try to cover all market opportunities in an application, even if they’re not in the invention’s claims.
“The value that we bring is, we think along with those companies and cover those aspects,” Lehrer said.
The consensus among attorneys who spoke with Bloomberg Law is that AI drafting tools are not advanced enough to go beyond augmenting human effort. The tools can’t yet grasp what an invention is and write claims—numbered sentences that describe the invention in a nuanced way. Claims take center stage in courtroom patent infringement battles.
“Writing claims that have any commercial value is really an art form,” Ian Schick, a former patent attorney who co-founded Specifio, told Bloomberg Law."You have to write how the invention fits into a client’s strategy and look at competing products.”
Schick said attorneys, who can some times face a “writer’s block,” may want to jump-start an application with a quick draft. So he created a service that automates mechanical aspects of preparing a typical 20- to 30-page patent application but leaves the intellectual heavy lifting to the attorneys.
Specifio generates the specification, a long body of text that provides how to make and use a claimed invention, with drawings.
“I found it very useful if used for the right applications,” Kaufman said of Specifio. “It’s not yet the right thing for every application as its focused on software-based inventions.”
Schick said his legal tech startup is working to expand to other technology areas and grow its roster of law firm clients, after honing its service for software applications in its first year.
Just like law firms, clients are warming up to the idea of machines partaking in their quest to score patents.
“There are some clients who aren’t comfortable at first because they think the machine is writing the patent application,” Kaufman said. “But some love the idea that we’re leveraging technology to give them better value.”