USPTO Issues AI Subject Matter Eligibility Guidance

July 22, 2024

The U.S. Patent and Trademark Office (USPTO) has issued an update to the guidance on patent subject matter eligibility to address artificial intelligence (AI). This update provides further clarity and consistency on 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 update also announces three new examples of how to apply this guidance through a few key technologies. 

The guidance update provides a discussion on certain areas of the guidance that are particularly relevant to AI inventions, including discussions of Federal Circuit decisions on subject matter eligibility. 

The three new examples provide hypothetical claims in certain situations, and offers exemplary determinations as to whether a claim recites an abstract idea or whether a claim integrates the abstract idea into a practical application.  These examples are meant to assist USPTO personnel in applying the USPTO’s subject matter eligibility guidance to AI inventions during patent examination, appeal, and post-grant proceedings.  

The full text of the guidance update is available on the USPTO’s Latest AI news and reports webpage and the corresponding examples are available on the AI-related resources webpage.  The USPTO will accept public comments on the guidance update and the examples through September 16, 2024 (see the Federal Register Notice). 

We will take a deep dive on the new examples provided by the USPTO in upcoming publications to the AI Patent Blog.