AI subject matter eligibility gets its own USPTO guidance

On July 17th, 2024, a new guidance update will go into effect to address patent subject matter eligibility for critical emerging technologies, primarily artificial intelligence (AI). The U.S. Patent and Trademark Office (USPTO)’s latest release continues its ongoing efforts to develop legal and policy measures to address AI’s impact on Intellectual Property Law in response to The Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.

Building on previous AI-related guidance for practitioners and inventorship, this new release will assist in determining subject matter eligibility of AI-assisted inventions under patent law (35 § U.S.C. 101). The USPTO’s stated intent is to create a balance that will “provide further clarity on evaluating subject matter eligibility of AI inventions while incentivizing innovations needed to solve world and community problems.”

The new directive includes several hypothetical scenarios aimed at addressing key areas of concern across various technologies to provide assistance in determining if a claim recites an abstract idea or if a claim integrates the abstract idea into a practical application. You can review the examples, which are intended for assistance during examinations, appeals, and post-grant proceedings as part of a greater analysis under 35 § U.S.C. 101.

You can find the full text here. The reference material released is extensive. Renner Otto will be taking a deeper dive into all of the directives and examples, and you can expect more updates regarding the many topics, potential issues, and resolutions this new guidance introduces.