On July 16, 2024, the United States Patent and Trademark Office (USPTO) introduced revised guidelines for assessing patent applications, particularly those involving critical and emerging technologies such as artificial intelligence (AI). This guidance aims to clarify the application of the Alice/Mayo test, a two-part framework used to determine whether a patent claim is directed to eligible subject matter under 35 U.S.C. § 101. The test evaluates if a claim involves a “judicial exception” such as an abstract idea, a law of nature, or a natural phenomenon, which are generally not eligible for patenting.

The USPTO's two-part Alice/Mayo test begins by determining if the claim is directed to a judicial exception. If it is, the analysis proceeds to whether the claim integrates the exception into a practical application. If the exception is integrated, the claim is eligible. If not, the USPTO then assesses if the claim includes additional elements that amount to significantly more than the exception. Claims that do so are eligible; otherwise, they are rejected. The newly released guidance aims to provide clearer examples and updated analysis to help examiners and applicants navigate this test, particularly for AI-related inventions.

The updated guidelines emphasize that AI inventions are typically seen as computer-implemented inventions and offer more clarity on how these inventions can be patented. For instance, AI claims that improve the functioning of a computer or another technology are more likely to be considered eligible. The guidance also highlights the importance of clearly describing technological improvements in the patent specification. Claims that specify a particular way to achieve a desired outcome, rather than broadly stating the outcome, are more likely to be deemed eligible.

Additionally, the USPTO has introduced three new Subject Matter Eligibility Examples providing additional analyses under 35 U.S.C. § 101 of hypothetical claims in specific situations. These examples address particular inquiries such as whether a claim recites an abstract idea or integrates the abstract idea into a practical application. The examples include using neural networks to detect data anomalies, AI methods for analyzing speech signals, and AI models for personalizing medical treatments. They are intended to assist USPTO personnel in applying the USPTO’s subject matter eligibility guidance to AI inventions during patent examination, appeal, and post-grant proceedings. These examples serve as a practical guide for drafting and prosecuting patent applications, showing that claims are more likely to be eligible if they demonstrate a specific technological improvement.

The guidance, effective July 17, 2024, will accept public comments through September 16, 2024. Whether future court decisions will align with this guidance remains uncertain. However, this development marks a significant step in clarifying patent eligibility for emerging technologies, ensuring that inventors receive adequate protection for their innovations. Ortiz & Lopez, PLLC will continue to monitor these changes to provide our clients with the most current and effective patent prosecution strategies.