USPTO issues AI subject matter eligibility guidance

WASHINGTON - The U.S. Patent and Trademark Office (USPTO) has issued a guidance update on patent subject matter eligibility to address innovation in critical and emerging technologies, including in artificial intelligence (AI). This guidance update will assist USPTO personnel and stakeholders in determining subject matter eligibility under patent law (35 § U.S.C. 101) of AI inventions. This latest update builds on previous guidance by providing further clarity and consistency to how the USPTO and applicants should evaluate subject matter eligibility of claims in patent applications and patents involving inventions related to AI technology. The guidance update also announces three new examples of how to apply this guidance throughout a wide range of technologies.

The guidance update, which goes into effect on July 17, 2024, provides a background on the USPTO's efforts related to AI and subject matter eligibility, an overview of the USPTO's patent subject matter eligibility guidance, and additional discussion on certain areas of the guidance that are particularly relevant to AI inventions, including discussions of Federal Circuit decisions on subject matter eligibility.

"The USPTO remains committed to fostering and protecting innovation in critical and emerging technologies, including AI," said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. "We look forward to hearing public feedback on this guidance update, which will provide further clarity on evaluating subject matter eligibility of AI inventions while incentivizing innovations needed to solve world and community problems."

The three new examples provide additional analyses under 35 § U.S.C. 101 of hypothetical claims in certain situations to address particular inquiries, such as whether a claim recites an abstract idea or whether a claim integrates the abstract idea into a practical application. They are intended to assist USPTO personnel in applying the USPTO's subject matter eligibility guidance to AI inventions during patent examination, appeal, and post-grant proceedings. The examples are available on our AI-related resourceswebpage and our patent eligibility pageon our website.

The USPTO continues to be directly involved in the development of legal and policy measures related to the impact of AI on all forms of intellectual property. The guidance update delivers on the USPTO's obligations under the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence(link is external)to provide guidance to examiners and the public on the impact of AI and issues at the intersection of AI and IP, including patent subject matter eligibility. This follows our announcement earlier this year on Inventorship guidance for AI-assisted inventions, as well as AI guidance for practitionersand a request for commentson the impact of AI on certain patentability considerations, including what qualifies as prior art and the assessment of the level of ordinary skills in the art (comments accepted until July 29, 2024).

The full text of the guidance update on patent subject matter eligibility is available on our Latest AI news and reports webpageand the corresponding examples are available on our AI-related resourceswebpage. The USPTO will accept public comments on the guidance update and the examples through September 16, 2024. Please see the Federal Register Notice(link is external)for instructions on submitting comments.