USPTO publishes AI subject matter eligibility guidance

On July 17, 2024, the USPTO updated its previously released AI subject matter eligibility guidelines to further clarify emerging technology innovation subject matter issues, including AI, including publishing the Federal Circuit’s decision on patent subject matter eligibility, which introduced three examples of how to apply USPTO subject matter eligibility across a broad range of technologies, further clarifying and aligning how the USPTO and applicants should evaluate the subject matter eligibility of patents and claims involving inventions related to AI technology.

These three new examples provide additional analysis of hypothetical claims in certain situations under 35 § USC 101, such as whether the claim refers to an abstract concept or whether the claim incorporates the abstract concept into a practical application.

The USPTO is directly involved in the development of legal and policy measures related to AI on all forms of intellectual property. This update introduces the USPTO's obligations under the Executive Order on the Safe, Reliable, and Trustworthy Development and Use of Artificial Intelligence to provide guidance to examiners and the public on the impact of AI and the intersection of AI and intellectual property (including patent subject matter eligibility). Previously, the USPO has issued relevant guidance on the invention rights of AI-assisted inventions, AI for practitioners, and the impact of AI on certain patentability considerations.

The USPTO will accept public comments on the guidance updates and examples until September 16, 2024.