What are the recent updates on AI patent eligibility?

Introduction

The U.S. Patent and Trademark Office (USPTO) has updated its patent subject-matter eligibility guidance to address inventions involving artificial intelligence (AI). Our Intellectual Property Team examines how the revised guidance will impact AI patent strategies.

The guidance treats AI inventions largely as it treats other complex computer-implemented inventions.
The AI guidance standardizes existing USPTO practices and summarizes precedent for all examiners to follow.
New patent applications should focus on the practical, nonmathematical technological improvements of AI.

Background

On July 17, 2024, the USPTO issued an update to its patent subject-matter eligibility guidance to specifically address AI inventions. This guidance is effective immediately and aims to clarify the types of AI-related inventions that are eligible for patenting under Section 101 of the Patent Act in light of recent technological advancements and court decisions.

Recent court decisions prohibit the patenting of inventions that fall into certain excluded categories, including abstract ideas, laws of nature, and natural phenomena. This new guidance affects patent strategies involving AI, machine learning (ML), and other software concepts.

Overview of the AI Guidance

The AI guidance does not replace the 2019 guidance and doesn’t make sweeping changes to the scope of the abstract idea groupings. Instead, it summarizes existing caselaw and introduces new hypothetical examples to map the 2019 guidance to AI-related issues.

Generally, the AI guidance’s treatment of AI is consistent with recent public comments that view AI/ML as a subset of computer-implemented inventions. The USPTO generally addresses AI-related concepts under the “mental process” or “mathematical calculation” frameworks.

Practical Applications of Abstract Ideas

In some instances, a practical application of an abstract idea may still be eligible for patenting. The AI guidance provides examples of how to analyze whether an AI-related invention is integrated into a practical application.

Takeaways

A fair characterization of the AI guidance is that AI is treated much the same as other complex computer-implemented inventions. Overall, arguments based on “preemption” or “complexity” in isolation remain unlikely to succeed.

Impact on Patent Strategies

While the guidance provides a helpful summary, we see little impact on current patent strategies for AI-related technology. Recommended patent strategies should focus on improvements to the computer technology itself and consider the practical, nonmathematical, technological improvements brought about by improved AI models.