Many AI Patent Eligibility Issues Still Hazy After Guidance

The U.S. Patent and Trademark Office released new guidance on patent eligibility for AI-related inventions. The guidance addresses the issue of whether AI inventions cover abstract ideas, which cannot be patented, and when they improve technology and therefore are patent-eligible. However, the technologically and legally complex nature of AI and patent eligibility means that many issues remain unresolved.

Finnegan partner Frank DeCosta told Law360 that that the new guidance may be helpful for people who don't closely follow patent litigation developments to have details of many cases collected in one place with some discussion of AI, but for many attorneys, "there's nothing really new there." He noted that after reading the discussion of AI-related inventions that the office indicates are eligible for patents and those it suggests may not be, figuring out where any other invention might fall "becomes sort of a pattern-mapping exercise."

"You're leaving it to the bar to draw inferences from the data that's being presented." He further stated, "The office is giving us training sets, and we're left to figure out what the contours of the rule are," said Frank.

Frank also expressed that instead of specific examples, it would have been more beneficial to have clear rules on AI-related patent eligibility, though he acknowledged the office's constraints in not making law. He said, "I appreciate that they're probably in a jam, because for them to provide more guidance, it might look like they were making law, which could be a problem."

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