Subject Matter Eligibility of AI Innovations—USPTO’s Updated Guidance

This article discusses the July 17, 2024 guidance^[1] issued by the United States Patent and Trademark Office (“USPTO”) regarding the 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) emphasizes the potential for “practical applications” of AI, and (3) provides Examples 47-49. These three points of consideration 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 published past examination guidance for subject matter eligibility to the MPEP^[2] and issued Examples 1-46 as resources for practitioners and examiners.^[3] These resources may remain highly relevant, useful tools for patent practitioners seeking protection of AI inventions.

Second, the guidance advises that Prong Two of Step 2A is a focal point for AI inventions, emphasizing the potential for practical applications of AI.^[4] A subject-matter-eligible claim should “cover a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.”

Towards this end, patent applicants may consider highlighting the importance of building the story of innovation into a disclosure for an invention that directly improves an AI technology or that leverages, harnesses, or incorporates AI in an invention in another technical field. Patent applicants may consider stating the story of innovation in clear terms the technical problem being solved and the technical solution offered to solve that problem.

While this may seem daunting, questions about this innovation story may be questions that inventors are willing and well-equipped to answer—e.g., What was the technical problem you were trying to solve? How did legacy tools solve this technical problem? What benefits does your solution have over legacy solutions?

With a disclosure that clearly specifies a technical problem and technical solution in hand, a practitioner may be able to craft a compelling argument on the subject matter eligibility of an AI invention that aligns with the USPTO PEG framework. In responding to a rejection or discussing an invention in an Examiner Interview, patent applicants may consider indicating the specific claim language that improves “the functioning of a computer or another technology or technical field” and illustrate the link between this claim language and the story of innovation told in the specification.^[5]

Finally, the guidance is accompanied by new examples 47-49. Each example provides background information about the nature of the invention and the technology in place of a full specification, figures, etc. that would comprise an actual patent application. Each example includes a claim that is subject matter eligible and, as a point of contrast, a claim that is not.

Example 47 applies the eligibility analysis to claims that recite 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 of analyzing speech signals and separating desired speech from extraneous or background speech. Example 49 has claims that recite an AI model that personalized medical treatment to the individual characteristics of a particular patient.

These new examples provide concrete illustrations of the types of claim limitations involving AI technologies that integrate a judicial exception into a practical application. Many examiners are well-versed in these published examples, and arguments that directly analogize to the examples may be compelling and effective. In this regard, for an AI invention, applicants may consider advancing an argument that a limitation integrates the judicial exception into a practical application that references a particular example among examples 47-49 to overcome a § 101 rejection.

In conclusion, the guidance is a part of ongoing efforts by the USPTO to clarify issues related to AI and provide guidance on subject matter eligibility. The intersection of these areas will continue to be a focal point of the USPTO in effectively promoting innovation, competition, and collaboration in burgeoning AI-based technologies and industries.

[1] 89 FR 55913 (July 17, 2024).

[2] See MPEP § 2103-2106.07.

[3] The examples are available at www.uspto.gov/PatentEligibility. Many of the examples are based upon past Federal Circuit decisions given the USPTO’s ongoing efforts to monitor developments in the courts.

[4] The guidance notes with respect to AI in particular that “many claims to AI inventions are eligible as improvements to the functioning of a computer or improvements to another technology or technical field.”

[5] The Federal Circuit recently reiterated the importance of the claims reflecting a disclosed technical improvement in Contour IP Holding, LLC v. GoPro, INC., Nos. 2022-1654, 2022-1691 (Fed. Cir. 2024).