What's new in USPTO's July 2024 Guidance on patenting AI?

The U.S. Patent and Trademark Office (USPTO) issued an update to the guidance on patent subject matter eligibility to address artificial intelligence (AI). This is an update to the October 2019 Update (incorporated into the MPEP in June 2020) and additional informal advisories by the USPTO Director. This update incorporates Federal Circuit decision on subject matter eligibility and provides further clarity and consistency on how the USPTO and applicants should evaluate subject matter eligibility of claims related to AI technology.

Patent subject matter eligibility under 35 U.S.C. § 101 refers to the types of inventions that can be patented. To qualify, the invention must fall into one of the statutory categories: a process, machine, manufacture, or composition of matter. However, even if an invention fits within these categories, it must also meet additional criteria set by the courts, particularly the Supreme Court’s Alice/Mayo two-step test.

In Step 1, the court determines whether the claim is directed to a patent-ineligible concept, such as an abstract idea, law of nature, or natural phenomenon. If the claim does involve such an ineligible concept, Step 2 examines whether the claim adds “something more” – an inventive concept that transforms the nature of the claim into a patent-eligible application. This step often involves looking at whether the claim recites elements that amount to significantly more than the abstract idea or natural law, ensuring that the patent doesn’t monopolize basic scientific principles or abstract concepts.

Judicial exception abstract idea is the category of patent-ineligible concept mostly involved in AI-related patent applications. Abstract ideas may include mathematical concepts, certain methods of organizing human activity, and mental processes.

As to Step 1, the July 2024 Guidance states that if a claim is merely based on or involves a mathematical concept, this does not mean that the claim recites a mathematical concept. For example, in XY, LLC v. Trans Ova Genetics, 968 F.3d 1323 (Fed. Cir. 2020), Federal Circuit stated that claims directed to operating a flow cytometry apparatus to classify and sort particles into at least two populations in real time to more accurately classify similar particles were not directed to "the abstract idea of using a 'mathematical equation that permits rotating multi-dimensional data'" even thought they may involve mathematical concepts.

The Guidance further states that claims do not recite a mental process when they contain limitations that cannot practically be performed in the human mind. For example, in Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355 (Fed. Cir. 2023), the Federal Circuit opined that claim limitations that only encompass AI in a way that cannot practically be performed in the human mind are not directed to a mental process and are thus patent eligible.

As to Step 2 regarding "something more," one way is to show that the claimed invention improves the functioning of a computer or improves another technology or technical field and therefore the claim integrates the judicial exception into a practical application of that exception. For AI-related invention, if the claims are directed to any of the following, the claimed subject matter may be considered not having a practical application and thus patent-ineligible under 35 USC 101:

• Amount to no more than a recitation of the words "apply it";

• Are no more than instructions to implement a judicial exception on a computer;

Are a general linking of the use of a judicial exception to a particular technological environment or field of use.

A useful approach in determining practical improvement is to consider the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome. The key here is the particularity; merely an idea of solution or outcome is insufficient. For example, a specific application of AI to a particular technological field can be considered providing a particular way to achieve a desired outcome. However, it should be noted that according to the Federal Circuit, an improvement in the judicial exception itself is not an improvement in the technology. In In re Board of Trustees of Leland Stanford Junior University, 989 F.3d 1367, the claims at issue were directed to methods of using data sets and an AI model to determine a haplotype phase of a genomic dataset. The Applicant there argued that the claimed process was an improvement over prior processes because it "yields a greater number of haplotype phase predictions," but the Federal Circuit found it was not "an improved technological process" and instead was an improved "mathematical process."

The Guidance provides additional examples of claims found by the Federal Circuit to be patent eligible for being directed to improving technology. For example, in CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020), the court notes that claims to a cardiac monitoring device that analyzes the variability in the beat-to-beat timing for atrial fibrillation and atrial flutter to more accurately detect the occurrence of these cardiac conditions were directed to an improvement in cardiac monitoring technology and not an abstract idea.

Finally, the Guidance clarifies that whether an invention was created with the assistance of AI is not a consideration for subject matter eligibility.

For additional examples provided by the Guidance, please see here.

Read here for the February Guidance and here for the April Guidance for more information about AI-assisted inventions and AI in patent law.