PatentNext Summary: The Desjardins decision, co-authored by new USPTO Director John Squires, signals a potential shift toward greater patent eligibility for AI and software innovations. By vacating a § 101 rejection and warning that “categorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology,” the Appeals Review Panel (ARP) emphasized that eligibility should not be used as a catch-all to reject claims better addressed under §§ 102, 103, and 112. For practitioners, the decision highlights the importance of describing concrete technical improvements in the specification, tying those improvements directly to the claim language, and framing claims as technological solutions rather than abstract ideas. This marks a potentially significant recalibration of the USPTO’s approach to AI-related claims under Director Squires’ leadership.
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On September 26, 2025, the USPTO’s Appeals Review Panel (ARP), led by newly appointed Director John Squires, vacated a sua sponte § 101 rejection in Ex parte Desjardins. This decision, combined with Squires’ issuance of the first patents of his tenure earlier this month, suggests the pendulum may be swinging back toward patent eligibility for AI and software innovations.
The Decision in Brief
The ARP concluded that claims directed to training a machine learning model on multiple tasks, while preserving performance on prior tasks, integrated an abstract idea into a practical application, satisfying Step 2A, Prong Two of the Alice framework. Specifically, the panel credited the claims for improving the functioning of the machine learning model itself, citing reduced storage requirements, lowered system complexity, and the prevention of “catastrophic forgetting.”
Crucially, the ARP warned against overbroad § 101 rejections that risk stifling innovation in key areas of emerging technology:
Categorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology.” – Desjardins Decision, p. 9.
The panel criticized prior reasoning that equated all machine learning with unpatentable algorithms on generic computers, emphasizing instead that software-based improvements can constitute technological improvements under precedents like Enfish and McRO.
Back to Basics: §§ 102, 103, and 112
In vacating the § 101 rejection, the ARP underscored that patent law already has the right tools to properly define the limits of protection:
At the same time, the claims at issue stand rejected under § 103. This case demonstrates that §§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope. These statutory provisions should be the focus of examination.” – Desjardins Decision, p. 10.
This passage signals that eligibility analysis should not do the heavy lifting of prior art or clarity rejections, potentially narrowing the role of § 101 going forward.
Director Squires and a New Era at the USPTO
Director Squires’ leadership is already being felt. Earlier this month, he issued the first patents of his tenure, one in medical diagnostics and one in distributed ledger technology, two areas that have faced § 101 headwinds in recent years. Combined with Desjardins, these actions reflect a broader policy recalibration toward enabling, rather than constraining, innovation in AI, software, and other cutting-edge fields.
Practical Implications for Patent Practitioners
- Describe Technical Improvements in the Specification: The ARP relied heavily on specification passages describing performance gains, storage reductions, and training efficiencies. Drafting applications to highlight these improvements provides the foundation for successful Step 2A, Prong Two arguments.
- Tie Improvements to Claim Language: The panel credited claim elements reciting performance preservation across tasks and reduced complexity, showing that well-drafted claims plus supporting disclosure can survive § 101 scrutiny.
- Expect More Focus on §§ 102/103/112: With § 101 potentially receding as a catch-all gatekeeper, obviousness and enablement may again become the principal battlegrounds for AI and software claims.
- Policy Winds Favor Eligibility: Director Squires’ early decisions and public statements suggest a USPTO more open to patenting emerging technologies, provided claims show concrete technical contributions.
Conclusion
Desjardins represents more than a single victory for one applicant. It may signal a USPTO-wide shift under Director Squires: away from categorical § 101 rejections and toward a balanced, innovation-friendly approach rooted in traditional patentability requirements. For AI and software innovators, this could mark the start of a new era of opportunity in securing robust patent protection.