USPTO Revamps Eligibility Guidance for AI-Assisted Inventions

The US Patent and Trademark Office’s recent update on inventorship for AI-assisted inventions expands the guidance published earlier this year and clarifies unresolved concerns troubling stakeholders, especially subject matter eligibility of typical inventions and AI-assisted inventions.

This update includes more examples for USPTO examiners to use when determining whether an invention meets patentability requirements. Because of its broad application to patent law, the newest guidance update is relevant and applicable to all patentable subject matter, not just AI-assisted inventions. This makes it especially important for any practitioner, stakeholder, or innovator looking to patent a novel idea.

Patent Subject Matter Eligibility

Step 1 of the analysis determines if the claimed invention falls into the four categories outlined in 35 USC § 101: process, machine, manufacture, or composition of matter (or any novel and useful enhancement thereof). Claimed innovations in one of these categories advance to Step 2, often known as the Alice/Mayo test—a two-step process that identifies claims pointing to a judicial exception to patentability. The test determines whether any exclusions permit the patentability of those claims.

Step 2 of the Alice/Mayo test is divided into two parts: Step 2A and 2B. Step 2A includes two prongs: 2A Prong 1 and 2A Prong 2. Step 2A Prong 1 assesses if a claim expresses or characterizes (recites) one of the judicial exceptions to patentability: abstract idea, law of nature, or natural phenomenon. If the claim doesn’t recite a judicial exception, the eligibility analysis is complete, and the claim is considered eligible.

However, if the claim recites a judicial exception, Step 2A Prong 2 comes into play. This assesses if the claim incorporates the judicial exception into “a practicable application of the exception” (which could be patentable). If the claim is “directed to” the exception, the examination into patent eligibility proceeds to Step 2B.

Step 2B evaluates whether the claim elements amount to “significantly more than the recited judicial exception"—i.e., whether the claim elements include more than just an abstract idea, natural law, or phenomenon. Claims that don’t meet this criteria are unpatentable.

The guidance update clarifies Alice/Mayo Steps 2A Prongs 1 and 2. First, in Step 2A Prong 1, the update streamlines the investigation of one specific judicial exception: an abstract idea. It instructs USPTO examiners to distinguish between claims that simply recite an abstract idea and those that incorporate or are based on abstract ideas.

To help with this, the update includes numerous instances of claimed inventions that are and aren’t abstract ideas for the following abstract idea categories: mathematical concepts, certain methods of organizing human activity, and mental processes.

Given the complexities of these topics, the update summarizes several relevant Federal Circuit holdings that affect the various groupings and provides guidelines for USPTO examiners and practitioners to use when determining whether claims are sufficiently concrete to avoid being considered abstract.

Regarding Step 2A Prong 2, the guidance update directs examiners to consider the claim as a whole—including limitations that don’t recite the judicial exception—when determining whether the claim integrates the judicial exception into a sufficiently practical application. This gives interested parties access to factors that courts have historically used to assess Step 2A Prong 2.

The latest guidance also provides more details on subject matter eligibility for inventions created by at least one human using one or more AI systems. Most importantly, it makes clear that the subject matter eligibility of an invention under 35 USC § 101 is unaffected by the employment of AI to aid in its creation. USPTO examiners aren’t to take AI into account while using the Alice/Mayo test and USPTO subject matter eligibility analysis to evaluate inventions.

Since many claims to AI inventions can be classified as improvements to computer functionality or to other technologies or technical fields, these claims may suggest a subject matter eligible improvement in a technology or computer if they offer a particular means of achieving a desired result. The USPTO offers instances of claims that satisfy these requirements and pass Alice/Mayo Step 2A Prong 2.

New Subject Matter Eligibility

The update concludes by adding three new subject matter eligibility examples pertaining to AI inventions. These examples join 46 others in providing guidance for stakeholders who seek further instruction on subject matter eligibility of their claimed inventions.

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 update also assists those seeking to patent or examine AI-assisted inventions by providing examples of how to successfully recite judicial exceptions. Stakeholders should review those examples prior to seeking or examining new patents.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

Author Information

Arjun Padmanabhan is an associate attorney at Cole Schotz with focus on commercial and intellectual property litigation.

Gary Sorden is co-chair of Cole Schotz’s intellectual property practice and trial attorney for matters involving high-stakes patent infringement.

Write for Us: Author Guidelines