In the Managing IP article “USPTO Provides ‘Roadmap’ for AI Patent Eligibility,” partner Mauricio Uribe offered insight on the US Patent and Trademark Office’s recently issued guidance on AI subject matter eligibility.
Uribe, who frequently works on applications in the software, EE and telecom fields, said the examples put forth in the guidance do not necessarily change the standard when it comes to what is or isn’t eligible in the patent application process. Uribe added that the guidance could still help practitioners avoid Section 101 rejections of their patent application, depending on how they phrase certain parts of their applications.
Uribe also noted that the guidance could have clarified the best practices for examiners in the patent eligibility analysis process because, he explained, examiners at times evaluate limitations in a way that “prevents the intended purpose of the additional analysis.”
However, Uribe said that while the guidelines do not explicitly reinforce that examiners must consider claim limitations individually, “in the examples [included in the guidelines], that’s exactly what the patent office does.” He added, “It’s difficult to get individual examiners to acknowledge that, so having more examples will be of real value to practitioners.”
Read the full article here [subscription required].
Uribe and fellow partners Melanie Seelig and Harnik Shukla recently authored an alert on this topic, found here.
