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2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (AI)
Cantor Colburn Client Alert
On July 17, 2024, the United States Patent and Trademark Office (“USPTO”) issued the “2024 Guidance Update on Patent Subject Matter Eligibility, including on Artificial Intelligence” (the “Eligibility Guidance”). 89 F.R. 58128 (July 17, 2024). The Eligibility Guidance aids USPTO personnel, patent practitioners, and patent applicants in evaluating subject matter eligibility of patent claims involving artificial intelligence (AI). The USPTO also issued three new examples for applying the Eligibility Guidance to AI inventions during examination, appeal, and post-grant proceedings.
The USPTO will continue to apply the existing Alice/Mayo test for analyzing whether claims to AI inventions are subject matter eligible under 35 U.S.C. § 101. However, the Eligibility Guidance provides considerations for evaluating claims directed to AI-inventions, particularly under Step 2A, Prong One and Prong Two. The Eligibility Guidance recognizes that “[m]any claims to AI inventions are eligible as improvements to the functioning of a computer or improvements to another technology or technical field.” (Eligibility Guidance at p. 58137). Further, the USPTO released three new subject matter eligibility examples, which highlight application of the Alice/Mayo test for hypothetical claims directed to AI inventions using the Eligibility Guidance. These Examples are intended to “provide exemplary subject matter eligibility analyses under 35 U.S.C. 101 of hypothetical claims” directed to AI inventions. (Eligibility Guidance at p. 58138)
