Patent Lodge

Dating all the way back to the Digital Revolution beginning in the 1950s and through the Alice decision in 2014, the U.S. Patent and Trademark Office (USPTO) and the law have struggled to provide clear and consistent guidance with respect to the eligibility of the subject matter of software patents. More recently, with the influx of artificial intelligence into every piece of technology we use, inventors have been seeking clarity on when AI inventions include patent-eligibly subject matter. This summer, the USPTO issued updated guidance on the ever-evolving subject-matter eligibility standard for the patentability of AI inventions. This guidance aims to provide clarity regarding the analysis of whether an invention is directed to an abstract idea and, even if the invention is an abstract idea, whether the invention is integrated into a practical application.

Distinction on Abstract Ideas

First, the guidance attempts to draw a distinction between whether something is inherently an abstract idea or if it is merely “based on” an abstract idea, the latter of which would be patentable. One provided example of something that is subject-matter eligible by not inherently being an abstract idea is a system that includes sensors attached to animals, a radio frequency reader to gather information from the sensors and a transmitter for transmitting the information to an interface. The guidance instructs examiners to determine whether a claim recites an abstract idea by first “identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea,” and second “determining whether the identified limitation(s) fall within at least one of the groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity, or mental processes).”

Practical Application Standard

Next, the guidance provides some additional clarity with respect to the practical application standard. This includes providing examples of what constitutes an “improvement to [a] technological process.” This could include using AI to automate something that could not previously be automated (or something that would not produce quality results if it were automated) due to limitations in the technology, error correction and detection encoding, improved monitoring of packet flows and improved analysis of heartbeats and atrial fibrillation timing in a cardiac monitoring device.

Ultimately, the USPTO is adding three AI-centric examples of what constitutes patent-eligible subject matter. Example 47 illustrates the application of the eligibility analysis to claims that recite limitations specific to AI, particularly the use of an artificial neural network to identify or detect anomalies. Example 48 illustrates the application of the eligibility analysis to claims that recite AI-based methods of analyzing speech signals and separating desired speech from extraneous or background speech. Example 49 illustrates the analysis of method claims reciting an AI model that is designed to assist in personalizing medical treatment to the individual characteristics of a particular patient. These examples, as well as examples provided throughout the remainder of the guidance, should assist practitioners in finding paths forward with the patent office for all types of software- and AI-based inventions.

More information can be found on the Federal Register website.