USPTO Releases Updated Guidance on AI Patent Eligibility

The U.S. Patent and Trademark Office (USPTO) has issued an updated guidance on patent subject matter eligibility, particularly focusing on innovations in artificial intelligence (AI) and other emerging technologies. This update aims to help USPTO staff and stakeholders better determine the AI patent eligibility of AI inventions under 35 U.S.C. § 101.

The new guidance builds on previous instructions, offering additional clarity and consistency for evaluating patent claims related to AI technology. It also introduces three new examples demonstrating how to apply these guidelines across various technologies. These examples provide in-depth analyses of hypothetical claims, addressing issues such as whether a claim constitutes an abstract idea or integrates it into a practical application. 

Effective July 17, 2024, the update includes:

  • A background on the USPTO’s efforts regarding AI and subject matter eligibility.
  • An overview of existing patent eligibility guidance.
  • Detailed discussions on relevant areas for AI inventions, including Federal Circuit decisions.

Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, emphasized the importance of this update in fostering and protecting innovation in critical technologies like AI. The USPTO invites public feedback on the guidance, aiming to enhance clarity in evaluating AI-related patent claims and encourage innovations that address global and community challenges.

The full guidance update and the new examples are accessible on the USPTO’s AI-related resources webpage and the patent eligibility page. Public comments on the update and examples are welcome until September 16, 2024, with instructions for submitting comments available in the Federal Register Notice.

This initiative aligns with the USPTO’s commitment to addressing the intersection of AI and intellectual property, following previous announcements on AI-assisted invention inventorship and guidance for AI practitioners. The USPTO continues to develop legal and policy measures regarding AI’s impact on intellectual property, meeting obligations under the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.