As inventors, attorneys and patent examiners grapple with the impacts of AI on patents, the United States Patent and Trademark Office (the “USPTO”) has released guidance concerning the subject matter patent eligibility of inventions that relate to AI technology.[1]  The impetus for this guidance was President Biden’s Executive Order on Safe, Secure and Trustworthy Development and Use of Artificial Intelligence, which directed the USPTO to issue guidance to patent examiners and applicants regarding patent subject matter eligibility in order to address innovation in AI and other critical and emerging technologies.  

It is important to note that the guidance concerns only the subject matter eligibility of inventions related to AI technology (referred to herein as “AI inventions”); it does not address patentability of inventions that were created by (or with the assistance of) AI tools, which was discussed in the USPTO’s guidance dated February 13, 2024 and which we analyzed in a post that can be found here.[2]  Additionally, while the USPTO’s guidance will shape the approach of USPTO examiners as they assess applications for AI-related inventions and therefore must be considered by practitioners handling such applications, the USPTO does not have the authority to set new law. 

Key Takeaways

  • Inventions related to AI must undergo the same subject-matter eligibility determination as other types of inventions.
  • While some AI inventions may face challenges on the basis that they are claiming abstract ideas, AI inventions are not categorically patent ineligible as abstract ideas.
  • Even claims that recite abstract ideas may contain additional elements that transform them into patent-eligible subject matter.
  • While the guidance offers some insight into how the USPTO will analyze AI inventions, some uncertainty will remain until (and most likely even after) cases on patentability of AI inventions are decided by the Federal Circuit. 
  • While this guidance update is focused on AI inventions, portions of this guidance can apply to other types of inventions.

The USPTO’s guidance makes clear that the subject matter eligibility test for AI inventions is the same as for any other invention, with examiners considering (i) whether the claim is for one of the statutory categories of invention set out in 35 USC § 101, namely processes, machines, manufactures or compositions of matter or new and useful improvements thereof and (ii) whether the claim is for subject matter that courts have found to be outside of the statutory categories of invention, namely abstract ideas, laws of nature and natural phenomenon. The USPTO guidance focuses on step two of the subject matter eligibility analysis and, more specifically, on whether AI inventions are abstract ideas, which was the key concern voiced by practitioners who responded to a USPTO request for comments on patenting AI inventions 

The analysis regarding whether a claim is directed to abstract ideas (or other ineligible subject matter) follows the two-prong Alice/Mayo test.  The test considers first whether the claim recites an abstract idea and, if so, whether the claim integrates the abstract idea “into a practical application of the idea” (as opposed to providing insignificant extra-solution activity or mere instruction to apply an abstract idea), such that the claim is not “directed” to the abstract idea.

Starting with the first prong, there is no set definition of what constitutes an abstract idea.  However, the Manual of Patent Examining Procedure groups abstract ideas based on case law to help examiners identify them.  The groupings are mathematical concepts, certain methods of organizing human activity and mental processes.  The USPTO guidance gives a number of non-AI examples of claims that are or are not mathematical concepts or methods of organizing human activity.  For mental processes, while AI may aim to replicate human processes by generating novel outputs, the guidance explains that claims do not recite a mental process “when they contain limitations that cannot practically be performed in the human mind.”  Claims for AI inventions that perform in ways the human mind is not equipped to perform would thus not be directed to abstract ideas. 

Moving to prong two of the Alice/Mayo test, the focus shifts to what additional elements are included in a claim apart from abstract ideas.  This step ensures that an inventor’s monopoly does not extend too far, while still allowing inventors to improve upon abstract ideas.  The guidance highlights that AI inventions could improve the functioning of a computer or another technology or technical field.  If an AI invention improves technology by providing a particular solution to a problem or a way to achieve a desired outcome, then it could be found to be patentable subject matter.  For example, AI inventions may provide a particular way to achieve a desired outcome when they claim a specific application of AI to a particular technological field (i.e., a particular solution to a problem).

An exemplary (and well-known) case provided by the USPTO to illustrate an improvement to technology involves a rule-based system to animate the lip synchronization and facial expressions of three-dimensional characters.[3]  There, the Federal Circuit relied on the specification’s explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated.  The court indicated that it was the incorporation of the particular claimed rules in computer animation that “improved [the] existing technological process.”  Moreover, the claims at issue described a specific way to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, rather than merely claiming the idea of a solution or outcome.  Therefore, the court found the claims were not directed to an abstract idea.

Additionally, in an attempt to assist the examiners and the public in forming a view as to patentability, the USPTO guidance describes three hypothetical AI inventions, certain claims of which would qualify as patent-eligible subject matter: the use of an artificial neural network to identify or detect anomalies, AI-based methods of analyzing speech signals and separating desired speech from extraneous or background speech and an AI model that is designed to assist in personalizing medical treatment to the individual characteristics of a particular patient.[4]

While the guidance offers some insight into how the USPTO will analyze AI inventions, the cases the USPTO cites relate to AI only by analogy and the hypothetical AI examples discussed by the USPTO are illustrative only.  Therefore, uncertainty will remain until cases on patentability of AI inventions are decided by the Federal Circuit or ultimately the Supreme Court.  Until then, the rapidly evolving technology and unique features of AI will make the analysis challenging for both practitioners and examiners.

[1] The full guidance can be found here.

[2] Separate USPTO guidance on inventorship for AI-assisted inventions can be found here, and please see our discussion of the guidance here. 

[3] McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016).

[4] The Subject Matter Eligibility Examples are available here.