USPTO Offers Updated Guidance on Patent Subject Matter Eligibility for AI

The USPTO has just issued an update to its guidance on subject matter eligibility, discussing the application of these guidelines to emerging technologies such as AI-related and AI-assisted inventions.  These guidelines are currently open to public comment until September 16.   

First and foremost, the guidance update seeks to elucidate whether a claim recites an abstract idea and “whether a claim integrates a recited judicial exception into a practical application because the claimed invention improves the functioning of a computer or another technology or technical field.” Of particular concern, according to the USPTO, is “the evaluation of the improvements consideration.” To clarify these issues, the updated guidance provides a discussion of how to evaluate whether a claim recites an abstract idea (i.e., mathematical concepts, certain methods of organizing human activity, and mental processes).

The guidance further includes a discussion of this analysis as applied to AI, which the office asserts “can be challenging for AI inventions.”

In November 2022, Artificial Intelligence took the world by storm in the form of ChatGTP.  However, even prior to ChatGPT, questions about the patentability of AI-based inventions were looming at the USPTO.  It is safe to say that in the last two years the questions have only grown exponentially more numerous and the need for answers to those questions have only grown more pressing. As AI continues to evolve and touch every facet of day-to-day life, from directing autonomous vehicles to drafting emails, it is now imperative that we get clear guidance regarding the rules of the AI road. The guidance update, motivated by President Biden’s October 2023 AI executive order, seeks to provide an “update on determining subject matter eligibility for AI inventions to promote clarity, consistency, and address innovation in AI and critical and emerging technologies.”

The currently proffered guidance update helps examiners, practitioners, and inventors navigate subject-matter eligibility, specifically using the Alice/Mayo Step 2A analysis. Perhaps most pertinently for AI, the guidance discusses whether additional elements in a claim improves the functioning of a computer or another technology. The guidance notes that “AI inventions may provide a particular way to achieve a desired outcome when they claim, for example, a specific application of AI to a particular technological field (i.e., a particular solution to a problem).”

According to the USPTO, “[m]any claims to AI inventions are eligible as improvements to the functioning of a computer or improvements to another technology or technical field.” Though the courts have yet to provide any clear test for how to evaluate eligible improvements, the guidance does include “an explanation of how to demonstrate an improvement for AI inventions and recent case law that may be helpful in demonstrating such an improvement.”

The new guidance confirms that “whether an invention was created with the assistance of AI is not a consideration in the application of the Alice/Mayo test.” Determining subject matter eligibility instead “focuses on the claimed invention itself and whether it is the type of innovation eligible for patenting.”

Finally, the updated guidance also provides three new hypothetical AI-centered examples of subject matter eligibility. These examples include claims to an artificial neural network (ANN) to identify or detect anomalies, AI-based methods of analyzing speech signals and an AI model designed to assist in personalizing medical treatment to the individual characteristics of a particular patient.

This is the third AI-related guidance in 2024.  This year, the USPTO already issued “Inventorship Guidance for AI-Assisted Inventions” and “Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office.” This previous guidance assisted examiners, practitioners, and inventors in determining inventorship for AI-assisted inventions. In that guidance, the USPTO dictates that for inventorship purposes, “current statutes (e.g., 35 U.S.C. 101 and 115) do not provide for recognizing contributions by tools such as AI systems (or other advanced systems).” As with the current guidance, the USPTO has been careful to note that AI-assisted inventions are not categorically unpatentable as long as “one or more persons made a significant contribution to the claimed invention.”