This article discusses the guidance from July 17, 2024.(1) issued by the United States Patent and Trademark Office (“USPTO”) regarding subject matter eligibility of patent claims involving artificial intelligence (“AI”). The guidance: (1) reaffirms that the existing Patent Eligibility Guidance (“PEG”) framework applies to AI, (2) highlights the potential for “practical applications” of AI and (3) provide Examples 47 to 49. These three considerations are discussed below.
First, the guidance reaffirms that the existing PEG framework will continue to be used to analyze claims across all technologies, including AI. The USPTO has issued prior examination guidelines regarding subject eligibility for the MPEP.(2) and published Examples 1-46 as resources for practitioners and examiners.(3) These resources may remain highly relevant and useful tools for patent practitioners seeking to protect their AI inventions.
Second, the guidance states that prong two of Stage 2A is a focal point for AI inventions, emphasizing the potential for practical applications of AI.(4) An eligible subject matter claim must “cover a particular way of achieving a desired result, as opposed to simply claiming the idea of a solution or result.”
To this end, patent applicants may consider emphasizing the importance of building the innovation story in disclosing an invention that directly improves an AI technology or that harnesses, exploits, or integrates AI into an invention in another technical field. Patent applicants may consider telling the story of the innovation in clear terms, the technical problem solved, and the technical solution proposed to solve that problem.
While it may seem daunting, the questions surrounding this innovation story may be questions that inventors are willing and well equipped to answer:For exampleWhat was the technical problem you were trying to solve? How have existing tools solved this technical problem? What are the advantages of your solution compared to existing solutions?
With a disclosure that clearly specifies a technical problem and a technical solution in hand, a practitioner may be able to craft a compelling argument about the eligibility of the subject matter of an AI invention that aligns with the framework USPTO PEG. When responding to a denial or discussing an invention during an interview with an examiner, patent applicants may consider indicating specific claim language that improves “the operation of a computer or other technology or technical field” and to illustrate the link between this claim language and the story of innovation told in the specifications.(5)
Finally, the Guidelines are accompanied by new Examples 47 to 49. Each example provides general information about the nature of the invention and the technology instead of a full description, figures, etc. which would constitute a real patent application. Each example includes a claim whose subject matter is eligible and, for contrast, a claim which is not.
Example 47 applies eligibility analysis to claims about the use of an artificial neural network to detect anomalies in traffic on a computer network. Example 48 involves claims that recite AI-based methods for analyzing speech signals and separating desired speech from extraneous or background speech. Example 49 contains assertions that recite an AI model that personalizes medical treatment based on the individual characteristics of a particular patient.
These new examples provide concrete illustrations of the types of claim limitations involving AI technologies that incorporate judicial exception into practical application. Many reviewers are familiar with these published examples, and arguments that relate directly to the examples can be persuasive and effective. In this regard, for an AI invention, applicants may consider advancing an argument that a limitation incorporates the judicial exception into a practical application that refers to a particular example among examples 47 to 49 to overcome a rejection under section 101.
In conclusion, this guidance is part of the USPTO’s ongoing efforts to clarify AI-related issues and provide guidance on subject eligibility. The intersection of these areas will continue to be a focal point of the USPTO in effectively promoting innovation, competition, and collaboration in booming AI-based technologies and industries.
(1) 89 FR 55913 (July 17, 2024).
(2) See MPEP § 2103-2106.07.
(3) Examples are available on www.uspto.gov/PatentEligibility. Many examples are based on prior Federal Circuit decisions, given the USPTO’s ongoing efforts to monitor court developments.
(4) The Guidelines note in particular, with respect to AI, that “many claims relating to AI inventions qualify as improvements in the operation of a computer or improvements in other technology or another technical field.
(5) The Federal Circuit recently reiterated the importance of claims reflecting a technical improvement disclosed in Contour IP Holding, LLC v. GoPro, INC.No. 2022-1654, 2022-1691 (Fed. Cir. 2024).
