USPTO Publishes Additional Subject Matter Eligibility Guidance – AI Technology
On Tuesday, July 16, 2024, the United States Patent and Trademark Office (USPTO) published the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (2024 Guidance Update)1 along with the companion July 2024 Subject Matter Eligibility Examples (2024 Examples).2 These publications address the mandate from the October 30, 2023 Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (the “AI EO”).
Overall, these publications appear to be consistent with the previous guidance and examples provided by the USPTO in 2019 (2019 Guidance) both in terms of analytical framework for assessing patent subject matter eligibility and exemplary analysis applying the analytical framework.3 Similar to the Revised Guidance, while the 2024 Guidance Update and 2024 Examples do not constitute substantive rulemaking from the USPTO, the detailed discussion and exemplary claim language in the 2024 Guidance Update and 2024 should be a very useful tool for practitioners, especially for considering inventive subject matter related to artificial intelligence-based technologies.
2024 Guidance
The 2024 Guidance includes three primary portions. The first portion includes the detailed procedural and administrative proceedings that relate to the issuance of the 2024 Guidance Update. The second portion includes an overview of the previously provided USPTO analytical framework for analyzing claims across all technologies, including AI-based inventions. The 2024 Guidance Update does not appear to make any substantive changes to the previously provided analytical framework. The third portion provides some selected discussion and summaries of judicial opinions applying the analytical framework to AI-based inventions. These summaries address whether claim limitations recite one of the three Enumerated Groupings under the Revised Guidance (Step 2A – Prong One) and whether additional claim limitations integrate a judicial exception into a practical application (Step 2A – Prong Two).
2024 Examples
Similar to the format of the October 2019 publication of Examples 43-46,4 the 2024 Guidance includes three additional examples, each with a short technological description of a hypothetical AI-based invention and a short set of sample claims, including claims directed to, and not directed to, patent eligible subject matter. As in 2019, the 2024 Examples describe the USPTO’s application of the analytical framework in view of the hypothetical fact scenario.
Patent Subject Matter Eligibility for AI
The 2024 Guidance Update and 2024 Examples do not provide any new or updated analytical framework for analyzing or establishing patent eligible subject matter for AI-based invention. Accordingly, established best practices for drafting patent specifications and claims and prosecuting claims before the USPTO remain. However, these new materials provide additional guidance for identifying and prioritizing AI-based inventions, as well as drafting AI claims, amendments and arguments during prosecution.
Resources
1. https://public-inspection.federalregister.gov/2024-15377.pdf – Officially published on July 17, 2024
2. https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf
4. https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_app1.pdf
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