Help or hindrance? Patent luminaries divided on using AI in private practice amid potential client concerns

AI is changing the game for IP professionals; it has huge potential to streamline day-to-day tasks, improve portfolio management and identify enforcement needs. However, this must be balanced against the risk of error when it comes to patent drafting and applications, which can devastate prosecution strategies. 

Practitioners from this year’s IAM Global Leaders – an annual showcase of the world’s most acclaimed patent experts – reveal key lessons from the frontline of using AI for patent drafting and identifying novel features in applications, including the advantages of integrating it into their workflows, how to handle potential concerns and areas where additional caution is necessary.

AI bolsters protection strategies and efficiency

Large language models and AI tools offer “significant potential to enhance efficiency and reduce costs and risks”, says Dominik Ho of df-mp. Mathieu de Rooij of Bardehle Pagenberg echoes that AI is great for streamlining some of the more “cumbersome” tasks in private practice, freeing up time and resources for higher-value work.

Indeed, Archana Shanker of Anand and Anand maintains that AI is “extremely useful” for assessing prior art. Winnie Tham of Amica Law goes one step further, claiming that these tools can “eliminate human error” when it comes to checking and generating output. AI can also monitor infringement in the market – “a task that would be overwhelming if we did it manually”. The technology’s ability to digest large amounts of data is “astounding”, Tham says, as it allows practitioners to enhance IP management processes for their clients and aids more strategic decision making, such as whether a patent should be maintained or areas of coverage and portfolio value.

Patrik Olsson of Zacco celebrates AI for its ability to support enforcement actions by analysing patterns of global counterfeits and infringement and “pooling data to identify hotspots where portfolios might benefit from enhanced protection or cost efficiencies in a lighter-touch approach”. This allows practitioners to make more targeted use of client resources and optimise enforcement.

But it is “not a professional peer”

While his experience using AI for patent drafting has only been “experimental” so far, for Barry Franks of Bjerkén Hynell, it has already highlighted key risks when used to identify novel or inventive features in patent applications. Although he commended the drafting tool for its ability to identify a possibly inventive feature, expand on disclosure of an invention and the prior art and write a credible description, he found that the text had to be read carefully to remove unworkable descriptions. 

Once AI identifies a novel or inventive feature, “a practitioner may be tempted to stop looking for further novel and inventive elements and could therefore miss a better rebuttal to an office action”, Franks warns. “AI is not a professional peer! It should be treated as a competent junior colleague – someone who can do a good job but lacks experience and understanding of the nuances of drafting and prosecution – who requires clear and carefully thought-out instructions and whose work needs to be critically checked.”

Jeffrey Whittle of Womble Bond Dickinson agrees. While work that is not externally facing or publicly accessed can benefit from AI tools, he insists that they “do not come close to replacing human judgement in complex and strategic areas, such as IP portfolio analysis”. Arno Riße of ARNOLD RUESS echoes that he has “not seen an AI application that has been sufficiently developed and perfected to be considered anything other than just that: an additional tool that we can use to support us in providing legal advice”.

Nevin Jacob Koshy of United Trademark & Patent Services also advises that AI must be used as merely one of many supportive tools, and that it is “crucial to apply human expertise and critical thinking to interpret AI-generated results and ensure that they align with legal principles and ethical standards”.

Addressing client worries about security and costs

From minor inaccuracies to worst-case scenarios, practitioners should be prepared to handle concerns over their use of AI. 

Both Ho and Reinhold Cohn Group’s Tamar Morag-Sela are prepared to meet these questions head on. When it comes to data security and privacy concerns, Ho reveals that df-mp is well positioned to leverage the advantages of AI while maintaining “the highest standards of client confidentiality” through its collaboration with a company that specialises in AI solutions, while Morag-Sela is prepped to reassure clients that AI tools are always used under strict supervision at her firm. “The human element remains critical,” she adds.

Meanwhile, Elliot Papageorgiou of Gowling WLG Intellectual Property reports that clients are more concerned with how using AI in private practice will impact what practitioners must bring to the table and how that translates to legal fees. “Volume work is likely to become even more cost sensitive, while value-added skills and work will continue to be rewarded with a price premium,” he predicts.

The road ahead – balancing the see-saw

Papageorgiou expects to see “tremendous changes in the way that certain prosecution and advisory tasks will be handled in future”. Some may be entirely automated, while others will, at least, be assisted by AI. 

One thing is clear: AI is here to stay – so IP practitioners must continue to adapt as it advances. Finding the right balance between leveraging AI’s capabilities and maintaining human oversight is crucial to avoid potential pitfalls, but it will be no easy task.

IAM Global Leaders is IAM’s annual opportunity to showcase the world’s leading IP luminaries who offer their insight into the industry’s most pressing topics. The 2025 edition is now live.