Aipedia: Patent and trade mark attorneys

AI responses to examination reports

Aipedia, by the Apex broking team · Last reviewed 2026-10-27

AI can help draft responses to UKIPO and EPO examination reports, but it can also concede scope unnecessarily or cite authorities that do not exist. A missed or defective response can lose rights, which is a clear and costly loss for a client.

Part of: AI in patent and trade mark attorneys

In short

Attorneys use AI to summarise objections, suggest amendments and draft arguments in response to examination reports. The risks are amendments that narrow claims more than needed, arguments relying on invented case law or guideline passages, and missed response deadlines when AI tools are bolted onto docketing. IPReg's AI guidance points to existing duties of competence and supervision, and the courts have stressed that lawyers must check AI research against authoritative sources. Claims for lost or narrowed rights usually fall under IPReg-compliant PI, subject to the policy terms.

How AI is used in prosecution

Examination reports from the UKIPO and the EPO raise novelty, inventive step, clarity and support objections. AI tools can summarise the objections, compare cited documents with the claims, suggest amendments and draft arguments. For high-volume portfolios, that saves real time. Some firms also use AI to read incoming office letters and propose response dates.

The risk is that the tool optimises for overcoming the objection, not for the client's commercial position. The quickest route to allowance can be the narrowest claim.

Office practice also differs. A response that suits one office's approach to inventive step or clarity may be weak before another, and practice changes, as the Supreme Court's 2026 decision on computer-implemented inventions shows (see Emotional Perception). A tool trained on older material may not reflect current practice.

The duties that apply

IPReg's AI guidance (final from 20 July 2026) relies on existing duties in the Core Regulatory Framework, including competence and supervision.
In R (Ayinde) v London Borough of Haringey [2025] EWHC 1383 (Admin), the Divisional Court said lawyers must check AI research against authoritative sources, including when relying on others' work (¶7 to 8). That case concerned court proceedings, but it is a sound standard for any submission to an office. See AI and citations at hearings.
CITMA's 2025 report flags hallucination risk in research and drafting.
Client instructions on amendments should be taken and recorded: the client, not the tool, decides how much scope to give up.

What can go wrong

Needless narrowing: an AI-suggested amendment adds a limitation that was not required to overcome the citation, leaving competitors free to design around it.
Invented authorities: arguments citing Board of Appeal decisions, case law or guideline passages that do not exist or do not say what is claimed. At best this damages credibility with the examiner; at worst it wastes a response opportunity.
Deadlines: AI date extraction misreads a letter or a term, and the response is late.

Illustrative scenario: a trainee uses a generative AI tool to draft a response. It adds a feature from the description to the main claim and argues inventive step with reference to a decision the supervising attorney does not check. The application is granted on the narrow claim. A competitor later launches a product without that feature. The client says the amendment was unnecessary and claims the value of the lost scope.

Some missed deadlines can be remedied through further processing or reinstatement procedures, subject to their conditions; others cannot. See AI docketing and deadlines.

How PI usually responds

Claims for lost or narrowed rights from negligent prosecution would usually fall within IPReg-compliant PI, subject to the policy terms. Valuing a claim for lost scope can be contested, because it depends on what the claims could have covered and what the client lost. Defence costs can be significant; see defence costs. Notify promptly if you discover an error that could lead to a claim, even if the client has not complained. See circumstance notification and AI hallucination liability.

Practical controls

Check every amendment against the citation: is each added feature needed?
Verify every authority and guideline reference at source.
Take and record client instructions on scope before filing.
Never rely on AI-extracted dates without checking the official record.
Supervisors review substance, not just format, for trainees using AI.

How Apex helps

Apex arranges PI for patent attorneys, and a broker can review how your cover treats AI-assisted prosecution work. See the attorneys hub and AI patent drafting.

Sources

Frequently asked

Can I use AI to draft a response to an examination report?

Yes, nothing in IPReg's guidance prevents it, but you are responsible for the response. Check each amendment is necessary, verify every authority at source and take the client's instructions on how much scope to give up.

What if an AI tool cites a decision that does not exist?

Remove it and check the rest of the argument. The Divisional Court in Ayinde said lawyers must check AI research against authoritative sources. Citing invented material to an office damages credibility and, if it causes loss, could support a negligence claim.

Who is responsible when a trainee uses AI on a response?

The firm and the supervising attorney. IPReg's guidance points to existing supervision duties. In a court context, Munir suggested a supervisor who fails to catch a junior's false citations may be more culpable than one who fails to check their own work.

Is a claim for unnecessarily narrowed claims covered by PI?

Usually, subject to the policy terms, as a negligence claim. Such claims can be hard to value because they turn on what scope was realistically available, so expect argument over loss as well as breach.

Check your PI covers how you use AI

Tell us about your firm and the work you do. A broker will review how your current PI treats AI-assisted work, or arrange new cover. No fee for a quote. Or call 0117 325 0027.

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Apex Insurance Brokers Limited is authorised and regulated by the Financial Conduct Authority. Registered in England and Wales, company number 07014570. This page is general information about how AI is used in the profession and how insurance may respond. It is not legal, regulatory or insurance advice on your circumstances, and it does not guarantee that cover will be available or on what terms.