What Pros and Cons are In-House Counsel Balancing When Working with Law Firms Using AI Tools for Patent Application Drafting and Prosecution?
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Many law firms are either already using or are actively considering using AI tools for patent application drafting and prosecution. But what risks and benefits are their corporate clients balancing in-house when allowing or disallowing use of AI tools in patent application drafting and prosecution. Are there concerns with lower quality work? Are there concerns with potential loss of trade secrets or confidentiality? What about data privacy, data security, and compliance risks? Are there advantages with lowering drafting and prosecution costs? What other top of mind issues do in-house attorneys have with their firms using or potentially using AI tools for handling their work?
Shruti Costales
Owner & Founder
Shruti Law PLLC®
Shruti Costales is the Owner & Founder at Shruti Law PLLC®. Shruti is a licensed US patent attorney and has worked in private practice, in-house, and with the Federal Government. She has 20+ years of deep legal experience in handling patent application drafting and prosecution, patent counseling, patent litigation, IP transactions, complex commercial transactions including drafting and negotiating XaaS agreements and handling FED/SLED agreements, supply chain agreements, and due diligence and mergers & acquisitions related assessments. Her experience includes working in the electrical & computer technologies, mechanical technologies, chemicals/materials technologies, and life sciences/healthcare technologies. Shruti has a BS in Chemical Engineering from Purdue University and a JD from Franklin Pierce Law Center (now the University of New Hampshire School of Law). Shruti is currently one of the Vice-Chairs of IPO's Artificial Intelligence (AI), Data, and New Emerging Technologies Committee. Over the last decade, Shruti has co-led IPO's DEI and Women in IP committees where she co-authored many white papers, guides, and toolkits. Recently, Shruti co-authored the AI Transactions Toolkit and the Data Use Agreement Template – both for IPO's AI/D/NET Committee. Shruti is the Vice Chair of the Patent Pathways® Board of Directors.
Elizabeth Lester
Assistant General Counsel, Intellectual Property
Equifax Inc.
Elizabeth Lester is Assistant General Counsel, Intellectual Property at Equifax, where she is responsible for global intellectual property matters for the company and ensuring that the IP strategy is aligned with business strategies. Prior to Equifax, Elizabeth worked for nearly a decade in private practice focusing on patent preparation and prosecution, portfolio management, and IP issues in business transactions. Elizabeth is an active proponent of diversity initiatives, including adoption and implementation of The Diversity Pledge at Equifax as one of its founding members.
Mark Vallone
Chief Patent Counsel, Americas
IBM Corp.
Mark Vallone, Chief Patent Counsel-Americas, is an experienced Intellectual Property Counsel at IBM Corp. with a strong background in the information technology and services industry. He brings deep expertise in patent law, patent strategy, patent procurement, IP transactions, and copyright/open source clearance.
Hunter Yancey Jr.
Lead Patent Counsel for Wireless Connectivity & Compute Technologies
Qualcomm Incorporated
Hunter Yancey Jr. practices intellectual property law focused on patent law while leveraging over two decades of experience. His current Qualcomm role is lead patent counsel for wireless connectivity and compute technologies. This dynamic role includes patent preparation and prosecution; legal support for advocacy, litigation, and licensing activities; providing counsel to business and technical leads on various patent matters; and partnering with IP team colleagues to develop and hone protection strategies for Qualcomm’s intellectual property. Prior to Qualcomm, his firm experience included an array of intellectual property matters at Troutman Sanders in Atlanta. Hunter holds a EE Bachelor’s Degree from Georgia Tech and a JD from UNH’s Franklin Pierce School of Law.