CLIENT ALERT – USPTO Issues Clarifying Guidance on Patent Eligibility for AI and Software-Related Inventions – Suggests Patenting AI Inventions May Become Easier

The United States Patent and Trademark Office (USPTO) has issued a memorandum reinforcing its current framework for assessing subject matter eligibility under 35 U.S.C. § 101, with specific attention to software-related technologies, including Artificial Intelligence (AI) and Machine Learning (ML). While the memorandum does not introduce new law or policy, it provides useful clarification on how examiners should apply existing guidance when evaluating claims involving judicial exceptions such as abstract ideas. This client alert highlights key takeaways relevant to innovators and patent applicants operating in software, AI, and related technical fields.

Key Reminders for Applicants in the Software and AI Space:

1. Mental Processes: Scope Must Be Limited to What Can Be Performed by the Human Mind – Examiners are reminded not to overextend the mental process category. Claims are not considered to recite a mental process if they involve functions that cannot be practically performed in the human mind—such as complex AI computations or hardware-based processes. This distinction is particularly important when drafting claims that reference decision-making, pattern recognition, or learning models.
2. Recites vs. Merely Involves a Judicial Exception – Not every reference to a mathematical concept or AI model amounts to a “recitation” of an abstract idea. The USPTO distinguishes between claims that merely involve an exception (eligible) and those that explicitly recite one (requires further analysis). For example, simply referring to a neural network training method does not automatically trigger an abstract idea analysis unless specific algorithms or calculations are detailed.
3. A Holistic Claim Analysis is Required – When evaluating whether a claim integrates a judicial exception into a practical application (Step 2A, Prong Two), the examiner must analyze the claim as a whole. Additional elements should not be assessed in isolation. The interaction between all claim limitations is critical in determining whether the invention reflects meaningful technological advancement.
4. Improvements to Technology Remain a Central Path to Eligibility – Claims that describe a particular technological solution to a specific problem—such as improved computer functionality or enhanced network security—are more likely to be considered patent eligible. The USPTO stresses that claims must do more than merely state a goal or result; they must include details on how the improvement is achieved.
5. “Apply It” Warnings: Mere Automation or Computer Implementation Is Not Enough – Examiners are cautioned against reducing claim language to “apply it” instructions—such as automating a business method or implementing an idea on a general-purpose computer. Applicants should ensure that claims recite technological solutions that go beyond computer implementation for its own sake.

Caution on Close Calls: A Rejection Must Be Justified – Importantly, the memorandum reiterates that a rejection under § 101 should only be issued when it is more likely than not (greater than 50% certainty) that the claim is ineligible. If eligibility is a “close call,” the examiner is instructed not to reject. This reflects a practical, evidence-based approach to prosecution. Moreover, even where a § 101 rejection is not made, examiners are expected to evaluate claims fully under §§ 102, 103, and 112, in keeping with compact prosecution principles.

What This Means for Patent Applicants: This guidance signals continued scrutiny of software and AI-related claims but offers a clearer path to patent eligibility for those inventions that solve real technical problems in specific ways. Applicants should consider the following steps to strengthen the eligibility posture of their claims: draft claims that focus on concrete technical solutions rather than high-level concepts or results; include detailed descriptions in the specification that identify the technical problem and the corresponding improvement; avoid language that merely describes automation or generic computer usage unless tied to a specific technical effect; and emphasize how the invention improves the functioning of a computer or advances a technical field.

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