The USPTO’s Recent § 101 Guidance: Good News for Software Patent Applicants

By Derek Fahey, Esq.
Registered Patent Attorney

For many years, 35 U.S.C. § 101 has been one of the greatest obstacles to obtaining patent protection for software innovations. Following the Supreme Court’s decision in Alice Corp. v. CLS Bank, software patent applicants routinely encountered eligibility rejections based on the assertion that their inventions were merely abstract ideas implemented on generic computer technology. As a result, obtaining meaningful patent protection often became more difficult, more expensive, and less predictable.

Although the law itself has not changed, the United States Patent and Trademark Office (USPTO) has recently issued several important updates that should improve consistency during patent examination and provide stronger support for patenting software and artificial intelligence (AI) inventions. These developments—including the August 2025 § 101 Reminder Memorandum, the December 2025 revisions to the Manual of Patent Examining Procedure (MPEP), and the precedential decision in Ex parte Desjardins—reinforce principles that should benefit both patent applicants and practitioners.

1. Claims Must Be Considered as a Whole

One of the most significant reminders is that patent claims must be evaluated as an integrated whole. Rather than dissecting claims into individual limitations and analyzing each element independently, examiners are instructed to consider how the claimed elements interact to provide a practical technological solution.

This guidance is particularly important for software inventions, where the innovation frequently lies in the interaction of multiple components rather than in any individual programming step. Applicants whose inventions solve technical problems through coordinated software architecture should find this clarification especially helpful when responding to § 101 rejections.

2. Renewed Emphasis on Technological Improvements

The USPTO also places renewed emphasis on technological improvements. If the specification demonstrates that the invention improves computer functionality or another technical field – and the claims reflect that improvement – the claims are more likely to satisfy § 101.

Importantly, the specification does not have to expressly state that the invention is an “improvement.” It is sufficient if a person of ordinary skill in the art would recognize the invention as providing a technological advancement. From a drafting perspective, this serves as an important reminder that patent applications should clearly identify the technical problem being addressed and explain how the invention provides a concrete technological solution.

3. Clarification Regarding Mental Processes

Another helpful clarification concerns mental process rejections. The USPTO reminds examiners that a claim should be considered a mental process only if it can practically be performed in the human mind.

Many AI and software operations involve computational processes that simply cannot be carried out mentally. As a result, this clarification should reduce the frequency of overly broad mental process rejections that have complicated prosecution of many software-related patent applications.

4. The Importance of Evidence

Perhaps most importantly, the USPTO reminds examiners that § 101 rejections, like every other rejection during patent examination, must be supported by a preponderance of the evidence. Eligibility should not be denied merely because the issue presents a close question.

For applicants, this provides meaningful support when challenging conclusory eligibility rejections that lack adequate factual or legal analysis. Examiners must articulate why a claim fails under § 101 rather than simply asserting that it is directed to an abstract idea.

5. A Practical Example

U.S. Patent No. 10,079,719 illustrates the type of software invention these principles are intended to protect. Rather than claiming the abstract concept of optimizing computer performance, the patent claims a specific system that monitors middleware operating within Docker containers, identifies performance bottlenecks, and dynamically adjusts system parameters while the system continues running.

The claims focus on a concrete technological implementation that improves system operation, not merely the desired result. This distinction is precisely what the USPTO’s recent guidance emphasizes.

6. Practical Takeaways for Software and AI Companies

While these updates do not eliminate Alice, they provide applicants and patent practitioners with stronger authority to challenge unsupported § 101 rejections and advocate for patent eligibility.

For companies developing software and AI technologies, the practical lessons remain clear. Patent applications should:

• Clearly identify the technical problem being solved.
• Explain the technological improvement achieved by the invention.
• Describe the specific mechanisms that produce that improvement.
• Ensure that the claims reflect those technological features rather than merely reciting a desired result.

Careful drafting has always been important. The USPTO’s recent guidance, however, provides applicants with stronger support for demonstrating that genuine technological innovations deserve patent protection.

V. Conclusion

For software developers, AI companies, and technology businesses, the USPTO’s recent guidance represents a welcome step toward greater predictability and consistency in software patent examination. Although § 101 will undoubtedly remain an important issue during prosecution, these updates provide applicants with additional authority to pursue meaningful patent protection and to challenge eligibility rejections that are unsupported by the evidence.

For innovators seeking to protect software and AI technologies, this is encouraging news—and another reminder that thoughtful patent drafting remains the foundation of a successful patent strategy.