USPTO tells examiners to ask whether a claim recites an abstract idea or merely involves one, and to look for the improvement

2024-07-17USPTO

2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, 89 Fed. Reg. 58128 (July 17, 2024), Docket No. PTO-P-2024-0026, signed by Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, effective July 17, 2024

The Office published a guidance update on subject matter eligibility under Section 101 of Title 35 of the United States Code, issued under Executive Order 14110 of October 30, 2023, with comments due September 16, 2024. It keeps the two-prong Step 2A analysis of the Manual of Patent Examining Procedure and directs how examiners apply it to artificial intelligence claims. On Prong One it states that a claim "recites" a judicial exception when the exception is "set forth" or "described" in the claim, that examiners "must draw a distinction between a claim that 'recites' an abstract idea" and "one that merely involves, or is based on, an abstract idea," and that limitations encompassing artificial intelligence operations that cannot practically be performed mentally are not mental processes. On Prong Two it frames the improvement inquiry as "the extent to which the claim covers a particular solution to a problem" rather than "merely claiming the idea of a solution or outcome," and states that "An improvement in the judicial exception itself is not an improvement in the technology." On artificial-intelligence-assisted inventions it states that "how an invention is developed is not relevant to the subject matter eligibility inquiry" and that they "are not categorically unpatentable." It announces Examples 47 through 49 and says it "does not constitute substantive rulemaking and does not have the force and effect of law."

What it changesThe update gives prosecution two arguments with the Office's own words behind them. First, a Prong One response to a mental-process rejection on a neural network claim should say what the claim sets forth and show that the network's operation cannot practically be performed in the human mind; a claim that uses a model to reach a result the examiner can call a judgment still recites the exception, so claim the computation, not the decision. Second, a Prong Two response should point to the specification's description of the technical problem and the particular solution and confirm that the claim recites that solution, because the test is how specifically the claim covers it, and a better model is not a technical improvement when the better thing is the abstract idea. For applications now being drafted, write the improvement paragraph in the specification first and draft the independent claim to recite its mechanism. The guidance directs Office personnel, does not bind the courts and lacks the force of law.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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