• The USPTO updated guidance explains key aspects of eligibility criteria, Bloomberg reports.

• The updated guidance further clarifies that subject matter eligibility of an invention is not impacted by the employment of AI to aid in its creation.

• The new guidelines have a broad application to patent law, being relevant and applicable to all subject matter.

The U.S. Patent and Trademark Office (USPTO) has updated its eligibility guidance for AI-assisted inventions, aiming to provide clearer rules on how these technologies can qualify for patents. 

The update expands on guidance published earlier this year, including more examples for USPTO examiners to use when determining whether an invention meets patentability requirements, according to an analysis by Cole Schotz attorneys Arjun Padmanabhan and Gary Sorden, published by Bloomberg Law.

The update makes clear that the subject matter eligibility of an invention is unaffected by the employment of AI to aid in its creation.

Why It Matters: 

• The USPTO’s update clarifies unresolved concerns pertaining especially to subject matter eligibility of typical inventions and AI-assisted inventions.

• The updated guidance has a broad application to patent law, thus being relevant and applicable to all subject matter, not only AI-assisted inventions.

What’s It About?

The revised guidance outlines specific steps for determining whether an AI-assisted invention qualifies for patent protection. To meet eligibility requirements, inventions must fall within a statutory category, be useful, novel, and non-obvious, and provide an “inventive concept” that is not merely an abstract idea, law of nature, or natural phenomenon.

• Step 1 – determines if the invention falls into the four categories outlined in 35 USC § 101: process, machine, manufacture, or composition of matter

• Step 2 or the Alice/Mayo test – a two-step process that identifies claims pointing to a judicial exception to patentability:

• Step 2A Prong 1 determines if a claim expresses one of the judicial exceptions to patentability: abstract idea, law of nature, or natural phenomenon. If it doesn’t, it is considered eligible.

• Step 2A Prong 2, for claims that recite a judicial exception, assesses if the judicial exception is incorporated into a practicable application.

• Step 2B determines if the claim elements include more than just the recited judicial exception, in order to be eligible.

AI Does Not Impact Subject Matter Eligibility

The guidance also discusses subject matter eligibility for inventions created by at least one human aided by AI. The update makes clear that the subject matter eligibility of an invention is not impacted by the employment of AI to aid in its creation, so USPTO examiners are urged not to take AI into account while using the Alice/Mayo test.

Examples:

To provide further clarity, the USPTO has introduced three new subject matter eligibility examples specifically for AI inventions:

• claims that recite limitations specific to AI, particularly the use of an artificial neural network to identify or detect anomalies

• claims that recite AI-based methods of analyzing speech signals and separating desired speech from extraneous or background speech

• claims reciting an AI model that is designed to assist in personalizing medical treatment to the individual characteristics of a particular patient 

“The USPTO’s guidance update provides much needed clarity for all stakeholders involved in drafting, prosecuting, and examining patents. By clarifying the requirements needed for claims to survive the Alice/Mayo test, the guidance update eliminates much uncertainty around § 101 and subject matter eligibility,” the Bloomberg analysis reads.