TAKEAWAY: The USPTO provided three new hypothetical examples and additional guidance specific to AI technology for patent eligibility analyses under 35 § U.S.C. 101.
The USPTO issued a guidance update regarding Artificial Intelligence (AI) subject matter eligibility that went into effect on July 17, 2024. The USPTO hopes that the guidance will provide "further clarify and consistency to how the USPTO and applicants should evaluate subject matter eligibility of claims in patent applications and patents involving inventions related to AI technology."
The guidance discusses evaluating whether a claim recites an abstract idea (Step 2A, Prong Two) under the two-part test for subject matter eligibility. The guidance emphasizes a distinction between "a claim that 'recites' an abstract idea ... and one that merely involves, or is based on, an abstract idea." Specifically, the guidance lists three new hypothetical examples related to AI technology that each include claims that do and do not recite an abstract idea:
- "claims that recite limitations specific to AI, particularly the user of an artificial neural network to identify or detect anomalies" (Example 47);
- "claims that recite AI-based methods of analyzing speech signals and separating desired speech from extraneous or background speech" (Example 48); and
- "method claims reciting an AI model that is designed to assist in personalizing medical treatment to the individual characteristics of a particular patient" (Example 49).
The guidance further discusses evaluating whether the claim as a whole integrates the abstract idea judicial exception into a practical application (Step 2A, Prong Two). The guidance emphasizes that AI invention claims may be eligible as "improvements to the functioning of a computer or improvements to another technology or technical field" when the claims provide "a specific application of AI to a particular technological field (i.e., a particular solution to a problem)."
Additional information regarding the USPTO's guidance can be found on its website here. The USPTO's 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence was published in the Federal Register on July 17, 2024, available here.
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