Key Takeaways:
- The guidance update reiterates the existing subject matter eligibility framework, while providing additional examples focused on innovations in AI.
- The guidance clarifies that the use of AI by a human inventor does not affect the subject matter eligibility analysis.
- Comments are invited through September 15, 2024, regarding the guidance and its examples.
On July 17, 2024, the U.S. Patent and Trademark Office (USPTO) issued a guidance update on patent subject matter eligibility to address innovation in critical and emerging technologies (ET), especially artificial intelligence (AI). The guidance update is issued in accordance with Executive Order 14110 on the "Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence" issued on October 30, 2023. The July 17 guidance update responds to feedback from stakeholders and recent Federal Circuit decisions on patent subject matter eligibility and provides additional examples of how to apply the USPTO's existing subject matter eligibility guidance to AI inventions during patent examination, appeal, and post-grant proceedings.
The guidance update does not announce any new USPTO practice or procedure and is meant to be consistent with existing USPTO guidance, which is incorporated into the Manual of Patent Examining Procedure (MPEP). The guidance update focuses on two areas of the USPTO's subject matter eligibility analysis that are particularly relevant to AI inventions: (1) whether a claim recites an abstract idea (at Step 2A, Prong One of the USPTO's subject matter eligibility analysis); and (2) whether a claim integrates a judicial exception into a practical application (at Step 2A, Prong Two of the USPTO's subject matter eligibility analysis).
Recitation of an Abstract Idea
The guidance update reiterates that the Alice/Mayo test for analyzing subject matter eligibility in Step 2A, Prong One has not changed. Whether a claim recites an abstract idea (i.e., mathematical concepts, certain methods of organizing human activity, and mental processes) is still considered in light of the USPTO's current subject matter eligibility guidance.
The guidance update provides additional non-limiting, hypothetical, examples of claims that do and do not recite an abstract idea. These include claims to an application-specific integrated circuit (ASIC) for an artificial neural network, a system for monitoring health and activity in a herd of dairy livestock animals, and a treatment method comprising administering rapamycin to a patient identified as having a certain syndrome.
Integration into a Practical Application
The guidance update provides further discussion regarding evaluation of improvements in Step 2A, Prong Two based on the USPTO's current subject matter eligibility guidance. The guidance update includes 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 guidance update emphasizes that an improvement in the judicial exception itself (e.g., a mathematical calculation or a mental process) does not constitute an improvement in technology for eligibility purposes. Instead, an improvement must be shown in one or more elements beyond the recited judicial exception. The guidance update also explains that an improvement to a computer or other technology must be claimed in terms of a specific way to achieve a desired outcome, as opposed to merely stating the desired solution or outcome. Merely "applying" the judicial exception, or generally linking the judicial exception to a field of use or technological environment, is insufficient for patent eligibility.
The guidance update provides additional examples of claims that Federal Circuit decisions indicate improve technology and are not directed to a judicial exception. These include claims to a specific hardware-based RFID serial number data structure, performing error correction and detection encoding, and a cardiac monitoring device that analyzes the variability in the beat-to-beat timing for certain cardiac conditions.
AI-Assisted Inventions
The guidance update also addresses AI-assisted inventions, which are inventions created by natural persons using one or more AI systems. The guidance update clarifies that for the subject matter eligibility analysis under 35 U.S.C. 101, whether an invention was created with the assistance of AI is not a consideration in the application of the Alice/Mayo test and USPTO eligibility guidance and, therefore, should not prevent USPTO personnel from determining that a claim is subject matter eligible. The guidance update explains that the patentability inquiry focuses on the claimed invention itself and whether it is the type of innovation eligible for patenting.
The guidance update refers to the USPTO's February 13, 2024 guidance on inventorship for AI-assisted inventions. That prior guidance explains that current statutes do not provide for recognizing contributions by tools such as AI systems for inventorship purposes, even if those AI systems were instrumental in the creation of the invention. However, the guidance update notes that AI-assisted inventions are not categorically unpatentable, and that patent protection may be sought for AI-assisted inventions where one or more persons made a significant contribution to the claimed invention.
Conclusion
The guidance update announces no significant directional change from the USPTO's current approach to patentability of AI inventions. The USPTO has invited comments from the public on the guidance update and the new examples, which must be received before September 15, 2024. Comments will be made available for public inspection. If you would like to further discuss any aspect of the guidance or would like to consider providing comments to the USPTO on any aspect of the guidance, please contact us.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.