The recent report from the United States Patent and Trademark Office update on the paternity of AI-assisted inventions expands the advice Published earlier this year, it clarifies unresolved concerns that stakeholders have, particularly the eligibility of typical inventions and AI-assisted inventions.
This update includes more examples that USPTO examiners can use to determine whether an invention meets the requirements for patentability. Because of its broad application to patent law, the latest updated guidance is relevant and applicable to all patentable subject matter, not just AI-assisted inventions. This makes it particularly important for any practitioner, stakeholder, or innovator seeking to patent a novel idea.
Admissibility of the subject matter of the patent
Step 1 of the analysis determines whether the claimed invention falls within the four categories described in 35 USC § 101: process, machine, manufacture or composition of matter (or any new and useful improvement thereof). Innovations claimed in any of these categories proceed to Stage 2, often called Alice/Mayo test: a two-step process that identifies claims that indicate a judicial exception to patentability. The test determines whether there are exclusions that allow those claims to be patentable.
Step 2 of the Alice/Mayo The test is divided into two parts: Step 2A and Step 2B. Step 2A consists of two parts: 2A Part 1 and 2A Part 2. Step 2A Part 1 assesses whether a claim expresses or characterizes (recites) one of the legal exceptions to patentability: abstract idea, law of nature or natural phenomenon. If the claim does not mention a legal exception, the eligibility analysis is complete and the claim is considered eligible.
However, if the claim mentions a judicial exception, Step 2A, Part 2, comes into play. It assesses whether the claim incorporates the judicial exception into “a practical application of the exception” (which could be patentable). If the claim “refers to” the exception, the examination of patent eligibility continues at Step 2B.
Step 2B assesses whether the claim elements represent “substantially more than the cited judicial exception,” that is, whether the claim elements include more than a mere abstract idea, natural law, or phenomenon. Claims that do not meet these criteria are not patentable.
Updated guidance clarifies Alice/Mayo Steps 2A, Tracks 1 and 2. First, in Step 2A, Track 1, the update simplifies consideration of a specific judicial exception: an abstract idea. It requires USPTO examiners to distinguish between claims that merely state an abstract idea and those that incorporate or are based on abstract ideas.
To achieve this, the update includes numerous examples of claimed inventions that are or are not abstract ideas for the following categories of abstract ideas: mathematical concepts, certain methods of organizing human activity, and mental processes.
Given the complexity of these topics, the update summarizes several relevant Federal Circuit decisions that affect the various groups and provides guidelines that USPTO examiners and practitioners can use to determine whether claims are sufficiently concrete to avoid being considered abstract.
With respect to Step 2A, Part 2, the updated guidance directs examiners to consider the claim as a whole, including limitations that do not mention the judicial exception, to determine whether the claim incorporates the judicial exception into a sufficiently practical application. This gives interested parties access to the factors that courts have historically used to evaluate Step 2A, Part 2.
The latest guidance also provides more detail on subject matter eligibility for inventions created by at least one human using one or more AI systems. Importantly, it makes clear that the subject matter eligibility of an invention under 35 USC § 101 is not affected by the use of AI to assist in its creation. USPTO examiners should not consider AI when using the Alice/Mayo USPTO subject eligibility testing and analysis to evaluate inventions.
Since many AI invention claims can be classified as improvements to the functionality of a computer or other technology or technical field, these claims may suggest a qualifying improvement to a technology or computer if they provide a particular means of achieving a desired result. The USPTO provides examples of claims that meet these requirements and pass Alice/Mayo Step 2A Pin 2.
Eligibility for a new subject
The update concludes with the addition of three new subject matter eligibility examples for AI inventions. These examples join 46 others to provide guidance to stakeholders seeking additional instruction on the subject matter eligibility of their claimed inventions.
The USPTO’s updated guidance provides much-needed clarity to all stakeholders involved in patent drafting, prosecution, and examination. By clarifying the requirements necessary for claims to survive prosecution, Alice/Mayo test, the updated guidance removes much of the uncertainty around § 101 and subject eligibility.
The update also assists those seeking to patent or examine AI-assisted inventions by providing examples of how to successfully cite judicial exceptions. Stakeholders should review these examples before applying for or examining new patents.
This article does not necessarily reflect the views 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, specializing in commercial and intellectual property litigation.
Gary Sorden is co-chair of Cole Schotz’s Intellectual Property Department and a litigator for cases involving high-stakes patent infringement.
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