On April 11, 2024, the U.S. Patent and Trademark Office published its guidance on the use of artificial intelligence-based tools in practice before the USPTO. This article explores the significance of the duty of candor and good faith, which figures prominently in that guidance for both patent and trademark applicants.

1. How Duty Of Candor Figures In USPTO AI Ethics Guidance
By Michael Cicero (April 18, 2024)
On April 11, the U.S. Patent and Trademark Office published
its guidance on the use of artificial intelligence-based tools in practice
before the USPTO.[1]
Its purpose in doing so was "to cabin the risks arising from the use of
AI in practice before the USPTO."[2] The AI ethics guidance follows
AI-related guidance concerning inventorship that the USPTO issued in
February.[3]
The AI ethics guidance predominantly addresses attorneys and
agents, discussing various ethics rules deemed relevant to governing
the manner in which AI might be used to generate documents to be filed with the USPTO.
Yet the duty of candor and good faith figures prominently in the AI ethics guidance and
applies to prospective patent and trademark applicants, not just to their attorneys and
agents.[4]
The Duty of Candor and Good Faith, Generally
Regarding patent applications, Rule 1.56(a) provides:
Each individual associated with the filing and prosecution of a patent application has
a duty of candor and good faith in dealing with the Office, which includes a duty to
disclose to the Office all information known to that individual to be material to
patentability.[5]
Trademark applications conclude with a verified statement by — or on behalf of — the
applicant. For example, applications based on purported existing use of the subject mark
conclude with either an oath[6] or declaration[7] attesting:
 "That the applicant believes the applicant is the owner of the mark; that the mark is
in use in commerce;"
 "[T]hat to the best of the signatory's knowledge and belief, no other person has the
right to use the mark in commerce, either in the identical form or in such near
resemblance as to be likely, when applied to the goods or services of such other
person, to cause confusion or mistake, or to deceive;"
 "[T]hat the specimen shows the mark as used on or in connection with the goods or
services; and"
 "[T]hat the facts set forth in the application are true."[8]
The AI ethics guidance invokes the Rule 1.56 "each individual" clause for both patent and
trademark matters, observing that proceeding includes patent and trademark prosecution,
as well as cases before the Patent Trial and Appeal Board and the Trademark Trial and
Appeal Board.[9]
Simply put, "the duty of candor and good faith applies to all conduct before the
Michael Cicero

2. USPTO."[10]
Consequences for Breaching the Duty in the Patent Context
Rule 1.56(a) states that "no patent will be granted on an application in connection with
which fraud on the Office was practiced or attempted or the duty of disclosure was violated
through bad faith or intentional misconduct." [11]
While this may suggest that the USPTO enforces the duty of candor and good faith by
rejecting affected patent applications, such is not the case:
[T]he examiner does not investigate and reject original or reissue applications under
37 CFR 1.56. Likewise, the examiner will not comment upon duty of disclosure issues
which are brought to the attention of the Office except to note, in appropriate
circumstances, that such issues are not considered by the examiner during
examination of patent applications.[12]
Enforcement of the duty of candor and good faith is thus left to patent litigants who invoke
an inequitable conduct defense.[13]
Inequitable conduct includes affirmative misrepresentations of a material fact, failure
to disclose material information, or submission of false material information, coupled
with an intent to deceive.[14]
Severe consequences usually accompany a finding of inequitable conduct.
First, an inequitable conduct finding "with respect to any claim in an application or patent,
renders all the claims thereof unpatentable or invalid," according to Section 2016 of the
Manual of Patent Examining Procedure.[15]
Second, under the doctrine of infectious unenforceability, an inequitable conduct finding can
also result in unenforceability of all claims in related patents, "thus, a finding of inequitable
conduct may endanger a substantial portion of a company's patent portfolio," according to
the U.S. Court of Appeals for the Federal Circuit's 2011 Therasense Inc. v. Becton,
Dickinson and Co. ruling.[16]
Third, "prevailing on a claim of inequitable conduct often makes a case 'exceptional,' leading
potentially to an award of attorneys' fees under 35 U.S.C. § 285," according to
Therasense.[17]
Consequences for Breaching the Duty in the Trademark Context
According to the U.S. Court of Customs and Patent Appeals' 1961 ruling in Bart Schwartz
International Textiles Ltd. v. Federal Trade Commission, the "obligation which the Lanham
Act imposes on an applicant is that he will not make knowingly inaccurate or knowingly
misleading statements in the verified declaration forming a part of the application for
registration."[18]
And according to the Federal Circuit's 2009 In re: Bose Corp. ruling, "fraud in procuring a
trademark registration or renewal occurs when an applicant knowingly makes false, material
representations of fact in connection with his application."[19]
Just as the USPTO does not reject patent applications on the ground of fraud, neither does it

3. do so for trademark applications: "The examining attorney may not issue a refusal of
registration based on fraud. If it appears to the examining attorney that fraud on the USPTO
has been committed, the examining attorney must" refer the matter to the Trademark
Register Protection Office.[20]
The TRPO oversees expungement and reexamination proceedings,[21] and the USPTO
director can initiate such proceedings on his/her own initiative.[22] Those proceedings can
result in partial or complete cancellation of a trademark registration due to nonuse of the
registered mark in connection with the goods and/or services listed in the registration.[23]
Such a result encompasses both fraudulent and nonfraudulent registrations vulnerable to
proof of nonuse.
Other enforcement of the anti-fraud obligations is left to trademark litigants. If a
registration was obtained fraudulently, an accused infringer can either petition to cancel the
registration in a TTAB proceeding[24] or file a cancellation claim or counterclaim in a federal
district court.[25]
Additionally, fraudulently obtaining a federal trademark registration can subject the
registrant to liability for "any damages sustained in consequence" of an injury caused by the
fraudulent procurement of the trademark registration.[26]
Duty of Candor and Good Faith Applied to Patent-Related AI Use
The AI ethics guidance reiterates the AI inventorship guidance's requirement that "all patent
claims must have a significant contribution by a human inventor."[27]
Thus, "if an AI system is used to draft patent claims that are submitted for examination, but
an individual listed in 37 CFR 1.56(c) has knowledge that one or more claims did not have a
significant contribution by a human inventor, that information must be disclosed to the
USPTO."[28]
Absent acquisition of such knowledge, however, "there is not presently a general duty to
inform the USPTO that an AI tool was used in the drafting of the paper unless specifically
required by the USPTO."[29]
Nevertheless, if there is a close question as to whether at least one human inventor made a
significant contribution to the development of a claimed invention, the close question should
be resolved in favor of disclosing to the USPTO "information regarding the interactions with
the AI system."[30]
Duty of Candor and Good Faith Applied to Trademark-Related AI Use
The AI ethics guidance counsels:
Particular care should be taken to avoid submitting any AI-generated specimens
which do not show actual use of the trademark in commerce, or any other evidence
created by AI that does not actually exist in the marketplace.[31]
The AI ethics guidance concludes that such materials, if filed with the USPTO, "could be
construed as a paper presented for an improper purpose" in violation of signature
certification regulations.[32]

4. Although not mentioned in the AI ethics guidance, if an applicant submits an AI-generated
specimen to support either a use-based application or a statement of use filed after
allowance of an intent-to-use application, the applicant thereby obtains a federal trademark
registration, and one could prove that the submission was made with the intent to deceive
the USPTO, then the registration would be vulnerable to a fraud-based cancellation
claim.[33]
Such a result could ensue because a submitted AI-generated specimen renders false the
portion of an applicant's verified statement "that the specimen shows the mark as used on
or in connection with the goods or services," as quoted above.
Conclusion
The AI ethics guidance stresses that it does not constitute substantive rulemaking and that
it lacks the force of law,[34] yet it clearly expresses the USPTO's expectations of how patent
and trademark applicants should comply with the duty of candor and good faith when
making any use of AI.
As demonstrated above, serious consequences can visit patent and trademark applicants
who violate that duty.
The AI ethics guidance also states that it "will be incorporated into the MPEP in due
course."[35]
Courts will therefore likely give the AI ethics guidance significant weight in determining
whether a given use of AI by a patent or trademark applicant breached the duty of candor
and good faith.[36]
Attorneys and agents can help their clients adhere to the duty of candor and good faith by
asking them whether AI played any role in developing an invention,[37] or in generating
any alleged specimens of trademark use, then taking responsive action to comply with the
AI ethics guidance.
Michael Cicero is a partner at Taylor English Duma LLP.
The opinions expressed are those of the author(s) and do not necessarily reflect the views
of their employer, its clients, or Portfolio Media Inc., or any of its or their respective
affiliates. This article is for general information purposes and is not intended to be and
should not be taken as legal advice.
[1] Guidance on the Use of Artificial Intelligence-Based Tools in Practice Before the United
States Patent and Trademark Office, 89 Fed. Reg. 25609 (Apr. 11, 2024) ("AI ethics
guidance"), https://www.federalregister.gov/documents/2024/04/11/2024-
07629/guidance-on-use-of-artificial-intelligence-based-tools-in-practice-before-the-united-
states-patent.
[2] AI ethics guidance, 89 Fed. Reg at 25609.
[3] Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. 10043 (Feb. 13,
2024), https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-
guidance-for-ai-assisted-inventions ("AI Inventorship Guidance"); see also Michael A.

5. Cicero, USPTO Publishes Guidance Allowing Use of AI to Derive an Invention if a Human
"Significantly Contributed" to It (Feb. 15,
2024), https://insights.taylorenglish.com/post/102j0cl/uspto-publishes-guidance-allowing-
use-of-ai-to-derive-an-invention-if-a-human-si.
[4] Although the AI ethics guidance discusses other ethics rules applicable to attorneys and
agents, including but not limited to the duty of confidentiality, discussion of those other
rules is beyond the scope of this article.
[5] 37 C.F.R. § 1.56(a).
[6] Trademark Manual of Examining Procedure (T.M.E.P.) § 804.01(a) (Oct. 2017).
[7] 37 C.F.R. § 2.20 (referring to 18 U.S.C. § 1001).
[8] 37 C.F.R. § 2.33(b)(1).
[9] AI ethics guidance, 89 Fed. Reg. at 25611.
[10] Id.
[11] 37 C.F.R. § 1.56(a).
[12] Manual of Patent Examining Procedure ("M.P.E.P.") § 2010 (Rev. 07.2022) (Feb.
2023).
[13] Id. ("It is the courts and not the Office that are in the best position to fashion an
equitable remedy to fit the precise facts in those cases where inequitable conduct is
established.").
[14] Baxter Int'l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1327 (Fed. Cir. 1998).
[15] M.P.E.P. § 2016.
[16] Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1289 (Fed. Cir. 2011)
(en banc).
[17] Id.
[18] Bart Schwartz Int'l Textiles, Ltd. v Fed. Trade Comm'n, 289 F.2d 665, 669 (C.C.P.A.
1961).
[19] Great Concepts, LLC v. Chutter, Inc., 84 F.4th 1014, 1018 (Fed. Cir. 2023) (quoting In
re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009)).
[20] T.M.E.P. § 906.04.
[21] United States Patent and Trademark Office, Trademark Register Protection Office:
Protecting the integrity of the trademark register and raising awareness of
scams, https://www.uspto.gov/about-us/trademark-register-protection-office (last accessed
Apr. 16, 2024).
[22] 37 C.F.R. § 2.92(b).

6. [23] See generally United States Patent and Trademark Office, Requesting an expungement
or reexamination proceeding, https://www.uspto.gov/trademarks/protect/requesting-
expungement-or-reexamination-proceeding (last accessed Apr. 16, 2024).
[24] 15 U.S.C. § 1064(3).
[25] 15 U.S.C. § 1119.
[26] 15 U.S.C. § 1120.
[27] AI ethics guidance, 89 Fed. Reg. at 25614.
[28] Id. at 25614-15.
[29] Id. at 25615.
[30] Id. Therefore, prospective patent applicants are best served by retaining any AI query
records generated during efforts to develop the invention.
[31] Id. at 25616.
[32] Id.
[33] See Std. Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 2006 TTAB LEXIS 9, at *38
(T.T.A.B. 2006) (cancelling all three registrations at issue, one of them involving a false
statement of use) ("Accordingly the registrations will be cancelled in their entireties. Fraud
cannot be cured by the deletion of goods from the registrations.").
[34] AI ethics guidance, 89 Fed. Reg. at 25610.
[35] Id. at 25611.
[36] Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995) ("While the
MPEP does not have the force of law, it is entitled to judicial notice as an official
interpretation of statutes or regulations as long as it is not in conflict therewith.").
[37] AI Inventorship Guidance, 89 Fed. Reg. at 10050 ("Given the ubiquitous nature of AI,
this inventorship inquiry could include questions about whether and how AI is being used in
the invention creation process.").