[Federal Register Volume 89, Number 137 (Wednesday, July 17, 2024)]
[Notices]
[Pages 58128-58138]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-15377]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2024-0026]
2024 Guidance Update on Patent Subject Matter Eligibility,
Including on Artificial Intelligence
AGENCY: Patent and Trademark Office, Department of Commerce.
ACTION: Examination guidance.
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SUMMARY: In accordance with Executive Order 14110 on the ``Safe,
Secure, and Trustworthy Development and Use of Artificial
Intelligence'' (October 30, 2023) (Executive Order), the United States
Patent and Trademark Office (USPTO) is issuing a guidance update on
patent subject matter eligibility to address innovation in critical and
emerging technologies (ET), especially artificial intelligence (AI).
This guidance update will assist USPTO personnel and stakeholders in
evaluating the subject matter eligibility of claims in patent
applications and patents involving inventions related to AI technology
(AI inventions). This update also announces a new set of examples that
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. In addition to addressing issues
especially relevant to AI inventions, this guidance update addresses
feedback from our stakeholders and includes discussions of recent
Federal Circuit decisions on patent subject matter eligibility. This
guidance update, together with the guidance provided in the Manual of
Patent Examining Procedure (MPEP), is to be used by USPTO personnel
when applying subject matter eligibility law.
DATES:
Applicability date: This guidance is effective on July 17, 2024.
Comment deadline date: Written comments must be received on or
before September 16, 2024.
ADDRESSES: Comments must be submitted through the Federal eRulemaking
Portal at www.regulations.gov. To submit comments via the portal, enter
docket number PTO-P-2024-0026 on the homepage and select ``Search.''
The site will provide a search results page listing all documents
associated with this docket. Find a reference to this document and
select the ``Comment'' icon, complete the required fields, and enter or
attach your comments. Attachments to electronic comments will be
accepted in Adobe[supreg] portable document format (PDF) or Microsoft
Word[supreg] format. Because comments will be made available for public
inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included in
the comments.
Visit the Federal eRulemaking Portal for additional instructions on
providing comments via the portal. If electronic submission of comments
is not feasible due to a lack of access to a computer and/or the
internet, please contact the USPTO using the contact information below
for special instructions.
FOR FURTHER INFORMATION CONTACT: Carolyn Kosowski, Senior Legal
[[Page 58129]]
Advisor, at 571-272-7688; Nalini Mummalaneni, Senior Legal Advisor, at
571-270-1647; or Matthew Sked, Senior Legal Advisor, at 571-272-7627,
all with the Office of Patent Legal Administration, Office of the
Deputy Commissioner for Patents.
SUPPLEMENTARY INFORMATION:
I. Background
Recognizing that ``[r]esponsible AI use has the potential to help
solve urgent challenges while making our world more prosperous,
productive, innovative, and secure,'' President Biden issued Executive
Order 14110.\1\ As its guiding principle, the Executive Order explains
that:
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\1\ Executive Order 14110, Safe, Secure, and Trustworthy
Development and Use of Artificial Intelligence, 88 FR 75191
(November 1, 2023).
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Promoting responsible innovation, competition, and collaboration
will allow the United States to lead in AI and unlock the technology's
potential to solve some of society's most difficult challenges. This
effort requires investments in AI-related education, training,
development, research, and capacity, while simultaneously tackling
novel intellectual property (IP) questions and other problems to
protect inventors and creators.
Section 5.2 (Promoting Innovation) of the Executive Order
specifically provides that:
(c) To promote innovation and clarify issues related to AI and
inventorship of patentable subject matter, the Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office (USPTO Director) shall:
* * * * *
(ii) subsequently, within 270 days of the date of this order, issue
additional guidance to USPTO patent examiners and applicants to address
other considerations at the intersection of AI and IP, which could
include, as the USPTO Director deems necessary, updated guidance on
patent eligibility to address innovation in AI and critical and
emerging technologies.
In accordance with Executive Order 14110,\2\ the USPTO is issuing a
guidance update on patent subject matter eligibility to address AI
inventions. Pursuant to 35 U.S.C. 101, four categories of invention are
appropriate subject matter for a patent: processes, machines,
manufactures, and compositions of matter. On the other hand, the courts
have found abstract ideas, laws of nature, and natural phenomena
(including products of nature) to be outside of, or exceptions to, the
appropriate subject matter for patents.\3\ This guidance update will
assist USPTO personnel and stakeholders in evaluating the subject
matter eligibility of claims in patent applications and patents
involving AI inventions. This guidance update provides background on
the USPTO's efforts related to AI and subject matter eligibility, an
overview of the USPTO's existing patent subject matter eligibility
guidance, and additional discussions of certain areas of the guidance
that are particularly relevant to AI inventions.
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\2\ Executive Order 14110, Safe, Secure, and Trustworthy
Development and Use of Artificial Intelligence, 88 FR 75191
(November 1, 2023).
\3\ See MPEP 2106.
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In addition to addressing AI inventions, this guidance update
addresses feedback from our stakeholders and provides further
explanation of Step 2A of the USPTO's subject matter eligibility
analysis, which asks whether a claim is directed to a judicial
exception that the courts have found to be outside of, or exceptions
to, the four statutory categories of invention.\4\ Step 2A of the
USPTO's subject matter eligibility analysis is a two-pronged inquiry in
which USPTO personnel evaluate: (1) whether a claim recites an abstract
idea or other judicial exception (at Step 2A, Prong One); and (2) if
so, whether the claim as a whole integrates the recited judicial
exception into a practical application of the exception, and thus is
not ``directed to'' the judicial exception (at Step 2A, Prong Two).
This guidance update also addresses the subject matter eligibility of
AI-assisted inventions, which are inventions created by natural persons
using one or more AI systems. Finally, it announces a new set of
examples that 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. This guidance
update, together with the direction provided in the MPEP, is to be used
by USPTO personnel when making determinations of subject matter
eligibility.
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\4\ See MPEP 2106, 2106.04.
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A. The USPTO's AI/ET Efforts
In August 2019, the USPTO issued a request for comments on
patenting AI inventions.\5\ Among the various policy questions raised
in the notice, the USPTO requested comments on whether there are any
patent eligibility considerations unique to AI inventions. In October
2020, the USPTO published a report titled ``Public Views on Artificial
Intelligence and Intellectual Property Policy,'' which took a
comprehensive look at the stakeholder feedback received in response to
the questions posed in the August 2019 notice.\6\ According to the
report, ``[a] majority of commenters agreed that AI is viewed best as a
subset of computer-implemented inventions. Therefore, this majority
felt that current USPTO guidance, especially on patent subject matter
eligibility and disclosure of computer-implemented inventions, is
equipped to handle advances in AI.'' \7\ However, some commenters were
concerned that AI inventions are at risk under the subject matter
eligibility analysis because they can be characterized as abstract
ideas.\8\
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\5\ Request for Comments on Patenting Artificial Intelligence
Inventions, 84 FR 44889 (August 27, 2019).
\6\ The full report is available at www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf.
\7\ Id. at iii.
\8\ Id. at 8.
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In June 2022, the USPTO held its inaugural AI/ET Partnership
meeting, which included a panel discussion on ``Subject Matter
Eligibility and the Impact of AI/ET Innovation.'' \9\ Following the
inaugural meeting, the USPTO held numerous events in 2022 and 2023,
including an AI and Biotech event, an AI-Driven Innovation event, and
an AI Tools and Data event. Also in 2023, the USPTO issued a request
for comments seeking stakeholder input on the current state of AI
technologies and inventorship issues that may arise in view of the
advancement of such technologies, especially as AI plays a greater role
in the innovation process.\10\ Additionally, in 2023 the USPTO held
public listening sessions on inventorship for AI-assisted inventions at
the USPTO headquarters and at Stanford University. Recently, the USPTO
issued several Federal Register Notices on AI. For example, on February
13, 2024, the USPTO issued ``Inventorship Guidance for AI-Assisted
Inventions,'' explaining the level of human contribution necessary for
the USPTO to issue a patent on AI-assisted inventions.\11\ On April 11,
2024, the USPTO issued ``Guidance on Use of Artificial Intelligence-
Based Tools in Practice Before the United States Patent and Trademark
Office,'' informing practitioners and the public of the important
issues that patent and trademark professionals, innovators,
[[Page 58130]]
and entrepreneurs must navigate while using AI in matters before the
USPTO.\12\ On April 30, 2024, the USPTO issued a ``Request for Comments
Regarding the Impact of the Proliferation of Artificial Intelligence on
Prior Art, the Knowledge of a Person Having Ordinary Skill in the Art,
and Determinations of Patentability Made in View of the Foregoing.''
\13\ This notice built on the USPTO's recent AI-related efforts
associated with Executive Order 14110,\14\ including the ``Inventorship
Guidance for AI-Assisted Inventions'' \15\ published on February 13,
2024.
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\9\ The recording is available at www.uspto.gov/about-us/events/aiet-partnership-series-1-kickoff-uspto-aiet-activities-and-patent-policy.
\10\ Request for Comments Regarding Artificial Intelligence and
Inventorship, 88 FR 9492 (February 14, 2023).
\11\ Inventorship Guidance for AI-Assisted Inventions, 89 FR
10043 (February 13, 2024).
\12\ Guidance on Use of Artificial Intelligence-Based Tools in
Practice Before the United States Patent and Trademark Office, 89 FR
25609 (April 11, 2024).
\13\ Request for Comments Regarding the Impact of the
Proliferation of Artificial Intelligence on Prior Art, the Knowledge
of a Person Having Ordinary Skill in the Art, and Determinations of
Patentability Made in View of the Foregoing, 89 FR 34217 (April 30,
2024).
\14\ Executive Order 14110, Safe, Secure, and Trustworthy
Development and Use of Artificial Intelligence, 88 FR 75191
(November 1, 2023).
\15\ Inventorship Guidance for AI-Assisted Inventions, 89 FR
10043 (February 13, 2024).
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B. USPTO's Patent Subject Matter Eligibility Efforts
The USPTO's ongoing efforts include monitoring subject matter
eligibility developments in the courts, soliciting input from
stakeholders, and issuing examination guidance to assist USPTO
personnel and stakeholders. In 2019, the USPTO published two
eligibility guidance documents: the ``2019 Revised Patent Subject
Matter Eligibility Guidance'' (2019 PEG) \16\ and the ``October 2019
Patent Eligibility Guidance Update'' (October 2019 Update).\17\ The
2019 PEG and the October 2019 Update revised USPTO procedures for
identifying abstract ideas and for determining whether a claim in a
patent application (or patent) is directed to a judicial exception
(laws of nature, natural phenomena, and abstract ideas) under Step 2A
of the USPTO's subject matter eligibility guidance.\18\
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\16\ 2019 Revised Patent Subject Matter Eligibility Guidance, 84
FR 50 (January 7, 2019).
\17\ October 2019 Patent Eligibility Guidance Update, 84 FR
55942 (October 18, 2019).
\18\ 2019 Revised Patent Subject Matter Eligibility Guidance, 84
FR 50 (January 7, 2019); October 2019 Patent Eligibility Guidance
Update, 84 FR 55942 (October 18, 2019).
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The 2019 PEG and the October 2019 Update were incorporated into the
MPEP in the June 2020 publication of the 9th Edition, Rev. 10.2019.
This guidance on subject matter eligibility continues to be available
in sections 2103-2106.07 of the current MPEP (9th Edition, Rev.
07.2022), published in February 2023 and is the primary source for the
USPTO's patent eligibility guidance.
As part of its continued efforts to bring clarity and consistency
to the application of the subject matter eligibility analysis, the
USPTO has also issued 46 examples providing analysis of various fact
patterns to assist USPTO personnel and stakeholders in evaluating
subject matter eligibility. The examples address a wide range of
technologies, including AI, biotechnology, business methods, diagnostic
and treatment methods, pharmaceutical treatments, precision medicine,
and software.\19\
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\19\ A copy of the examples and the index are available on the
USPTO's website at www.uspto.gov/PatentEligibility.
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Following the issuance of the 2019 PEG and the October 2019 Update,
the USPTO released a report titled ``Adjusting to Alice,'' which
focuses on two USPTO patent examination outcomes and evaluates how
these outcomes changed in response to the Supreme Court's decision in
Alice Corp. v. CLS Bank International and the USPTO's guidance changes
(e.g., the 2019 PEG).\20\ The report discusses a study undertaken by
the USPTO's Office of the Chief Economist in April 2020, which found
that the 2019 revisions to the eligibility guidance resulted in a 25%
decrease in the likelihood of Alice-affected technologies, including
AI, receiving a first office action with a rejection for patent
ineligible subject matter. The report also found that uncertainty about
determinations of subject matter eligibility for the relevant
technologies decreased by a remarkable 44% as compared to the previous
year.
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\20\ The report is available at www.uspto.gov/sites/default/files/documents/OCE-DH_AdjustingtoAlice.pdf; Alice Corp. v. CLS Bank
Int'l, 573 U.S. 208 (2014).
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In June 2022, the USPTO published a report titled ``Patent eligible
subject matter: Public views on the current jurisprudence in the United
States,'' which summarized public views on how the current state of
patent eligibility jurisprudence impacts investment and innovation in
critical technologies, including AI.\21\ This report was requested by
U.S. Senators Thom Tillis, Chris Coons, Mazie Hirono, and Tom Cotton,
and summarized comments the USPTO received from a diverse group of
stakeholders in response to a request for information the USPTO
published in July 2021.\22\ According to the report, some commenters
discussed how current subject matter eligibility jurisprudence impacts
AI/ET and expressed ``concerns that uncertainty and unpredictability in
the law are undermining U.S. economic and innovative development.''
\23\ In contrast, while ``all commenters recognized the importance of
fostering AI and quantum computing technologies, not all commenters
held the view that stronger or more robust patent rights for these
areas would achieve such results,'' and some commenters even
``advocated that AI innovations should be excluded from [subject
matter] eligibility.'' \24\
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\21\ Patent eligible subject matter: Public views on the current
jurisprudence in the United States, available at www.uspto.gov/sites/default/files/documents/USPTO-SubjectMatterEligibility-PublicViews.pdf.
\22\ Patent Eligibility Jurisprudence Study, 86 FR 36257 (July
9, 2021).
\23\ Patent eligible subject matter, 37.
\24\ Id. at 38.
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On July 25, 2022, the USPTO published a ``Director's Blog''
authored by Katherine K. Vidal, Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office, titled ``Providing clear guidance on patent subject
matter eligibility.'' The Director's Blog summarized the USPTO work on
subject matter eligibility and emphasized that ``there is more work to
be done'' to ``achieve a more consistent examination under Section
101.'' \25\ The blog invited the public to comment on the subject
matter eligibility guidance in MPEP 2106. The USPTO extended the period
to comment on the blog via a Federal Register Notice.\26\
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\25\ The blog is available at www.uspto.gov/blog/director/entry/providing-clear-guidance-on-patent?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=.
\26\ Submission of Comments Regarding the Patent Subject Matter
Eligibility Guidance, 87 FR 53736 (September 1, 2022).
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As illustrated above, the USPTO has actively engaged with our
stakeholders and has received extensive input from the public on
subject matter eligibility and AI. In accordance with recent
stakeholder feedback on the USPTO's subject matter eligibility guidance
and the Executive Order 14110, and to continue its mission to drive
U.S. innovation, inclusive capitalism, and global competitiveness as AI
technology continues to advance and as judicial precedent evolves, the
USPTO is providing a guidance update on determining subject matter
eligibility for AI inventions to promote clarity, consistency, and
address innovation in AI and critical and emerging technologies.
[[Page 58131]]
C. Summary of Guidance Update and Impact on Examination Procedure and
Prior Examination Guidance
Section II of this guidance update provides an overview of the
USPTO's existing patent subject matter eligibility guidance. Section
III provides an update on certain areas of the USPTO's subject matter
eligibility guidance that are particularly relevant to AI inventions,
including: (1) whether a claim recites an abstract idea (at Step 2A,
Prong One of the USPTO's subject matter eligibility analysis); and (2)
whether a claim integrates a recited judicial exception into a
practical application because the claimed invention improves the
functioning of a computer or another technology or technical field (at
Step 2A, Prong Two of the USPTO's subject matter eligibility analysis).
Section IV of this guidance update addresses AI-assisted inventions.
Section V announces Examples 47-49, which are intended to assist
examiners in applying the USPTO's subject matter eligibility guidance
to AI inventions during the patent examination process. The USPTO has
also produced an updated index of examples that includes the new set of
examples. A copy of the examples and the index are available on the
USPTO's website (www.uspto.gov/PatentEligibility).
While this guidance update is focused on AI inventions, portions of
this guidance can apply to other types of inventions. This guidance is
not intended to announce any new USPTO practice or procedure and is
meant to be consistent with existing USPTO guidance. However, if any
earlier guidance from the USPTO, including any section of the current
MPEP, is inconsistent with the guidance set forth in this notice, USPTO
personnel are to follow this guidance. This guidance update will be
incorporated into the MPEP in due course.
This guidance does not constitute substantive rulemaking and does
not have the force and effect of law. The guidance sets out agency
policy with respect to the USPTO's interpretation of the subject matter
eligibility requirement of 35 U.S.C. 101 in view of decisions by the
Supreme Court and the United States Court of Appeals for the Federal
Circuit (Federal Circuit). The guidance does not create any right or
benefit, substantive or procedural, enforceable by any party against
the USPTO. Rejections will continue to be based on the substantive law,
and it is those rejections that are appealable to the Patent Trial and
Appeal Board and the courts.
II. Overview of the USPTO's Patent Subject Matter Eligibility Guidance
The USPTO's subject matter eligibility guidance is found in MPEP
sections 2103-2106.07(c) and is used to analyze claims across all
technologies, including AI inventions, which are generally considered
to be computer-implemented inventions. For context for the AI-related
discussion that follows, this subsection summarizes some of the
existing guidance in the MPEP for those readers unfamiliar with the
existing subject matter eligibility guidance.
The guidance in the MPEP combines the criteria for eligibility into
a single analysis, shown in the following flowchart, that applies to
all categories of claims (i.e., process, machine, manufacture, and
composition of matter) and all types of judicial exceptions (i.e., an
abstract idea, law of nature, or natural phenomenon).\27\
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\27\ MPEP 2106, subsection III provides a flowchart and an
accompanying summary of the subject matter eligibility analysis. The
flowchart in MPEP 2106, subsection III has been updated, as shown,
to include reference to Alice/Mayo Steps 1 and 2 and to include a
dotted line around Step 2A (Alice/Mayo Step 1).
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Step 1 of the USPTO's subject matter eligibility analysis addresses
whether the claimed invention falls into at least one of the four
categories recited in 35 U.S.C. 101.\28\ Step 2 of the USPTO's subject
matter eligibility analysis applies the Supreme Court's two-part
framework (Alice/Mayo Steps 1 and 2 in the above flowchart) to identify
claims that are directed to a judicial exception and to then evaluate
if additional elements of the claim provide an inventive concept.
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\28\ Prior to examining claims for eligibility, it is essential
that the broadest reasonable interpretation (BRI) of the claim as a
whole be established. The BRI sets the boundaries of the coverage
sought by the claim and will influence whether the claim seeks to
cover subject matter that is beyond the four statutory categories or
encompasses subject matter that falls within the exceptions. See
MPEP 2106, subsection II and 2111 for more information on
determining the BRI. In addition, more information about Step 1 is
provided in MPEP 2106.03.
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Step 2A \29\ is a two-pronged inquiry as shown in the flowchart
below.\30\
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\29\ Step 2 corresponds to Step 1 of the Alice/Mayo test.
\30\ This flowchart differs from the one in MPEP 2106.04,
subsection II.A because it no longer refers to Step 2A as
``Revised'' and includes the addition of the explanatory block
``Step 2A: YES The claim is directed to a judicial exception.'' More
information about Step 2A is provided in MPEP 2106.04 and its
subparts.
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The first prong (Step 2A, Prong One) is a determination of whether
a claim recites (i.e., sets forth or describes) a judicial
exception.\31\ As explained in MPEP 2106.04, subsection II.A.1, a claim
``recites'' a judicial exception when the judicial exception is ``set
forth'' or ``described'' in the claim. If the claim does not recite a
judicial exception, it is considered eligible, and the eligibility
analysis ends. But if the claim does recite a judicial exception, the
eligibility analysis continues to the second prong of Step 2A. This
prong (Step 2A, Prong Two) is used to determine whether the claim
integrates the recited judicial exception into a practical application
of the exception (in which case the claim is eligible) or whether the
claim is ``directed to'' the exception (in which case the claim
requires further analysis at Step 2B). The Step 2A, Prong Two analysis
requires an evaluation of the judicial considerations identified in
MPEP 2106.04(d), subsection I; 2106.04(d)(1); 2106.04(d)(2); and
2106.05(a)-(c) and (e)-(h), such as whether the additional element(s)
is(are) insignificant extra-solution activity; whether the additional
element(s) is(are) mere instruction to apply an exception; or whether
the claim reflects an improvement in the functioning of a computer, or
an improvement to another technology or technical field.\32\ If the
additional element(s) in the claim integrates the judicial exception
into a practical application of the exception, the claim is not
``directed to'' the judicial exception, and the claim is eligible.\33\
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\31\ For a detailed discussion of the judicial exceptions (i.e.,
an abstract idea, law of nature, or natural phenomenon) and how
USPTO personnel determine whether a claim recites a judicial
exception, see MPEP sections 2106.04(a)-(c).
\32\ See MPEP 2106.04(d) for a discussion of Step 2A, Prong Two.
\33\ Note that claims that are eligible at Step 2A, Prong 2 are
also eligible at Step 2B. In addition, the improvements analysis
performed at Step 2A, Prong 2 can also be performed at Step 2B. See
MPEP 2106.04(d)(1) (``While the courts usually evaluate
`improvements' as part of the `directed to' inquiry in part one of
the Alice/Mayo test (equivalent to Step 2A), they have also
performed this evaluation in part two of the Alice/Mayo test
(equivalent to Step 2B).'' (citation omitted)).
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If the claim is found to be directed to a judicial exception in
Step 2A, the analysis continues to Step 2B \34\ to evaluate whether the
claimed additional elements amount to significantly more than the
recited judicial exception itself.\35\ Step 2A, Prong Two is similar to
Step 2B in that both analyses involve evaluating a set of judicial
considerations to determine if the claim is eligible.\36\ Although most
of these judicial considerations overlap (i.e., they are evaluated in
both Step 2A, Prong Two and Step 2B), Step 2B includes a consideration
of whether the additional element (or combination of elements) is a
well-understood, routine, conventional activity.\37\ A claim may be
found to lack significantly more (and thus be ineligible) based on one
or more of these judicial considerations (e.g., a conclusion that the
additional limitation(s) is(are) insignificant extra-solution activity
or mere instructions to apply an exception), in which case USPTO
personnel will reject the claim under 35 U.S.C. 101 as lacking
eligibility. If an eligibility rejection is based on a conclusion that
an additional element or combination of elements is
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well-understood, routine, conventional activity in the field, the
rejection should contain factual support for this conclusion, in
accordance with MPEP sections 2106.05(d), subsection I and
2106.07(a).\38\
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\34\ Step 2B corresponds to the second part of the Alice/Mayo
test.
\35\ See MPEP 2106.05, subsection I.
\36\ See MPEP 2106.05(a)-(h) for the list of considerations that
are evaluated at Step 2B.
\37\ MPEP 2106.05, subsection II; MPEP 2106.07(a), subsection
II. See also MPEP 2106.05(d).
\38\ However, as explained in MPEP 2106.07(a), subsection III,
``[a]t Step 2A Prong Two or Step 2B, there is no requirement for
evidence to support a finding that the exception is not integrated
into a practical application or that the additional elements do not
amount to significantly more than the exception unless the examiner
asserts that additional limitations are well-understood, routine,
conventional activities in Step 2B.''
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If USPTO personnel determine in Step 2B that the additional
elements do amount to significantly more than the judicial exception,
the claim is patent eligible. If the additional elements do not amount
to significantly more, USPTO personnel will reject the claim under 35
U.S.C. 101 as lacking patent eligibility, and the applicant will be
given a chance to respond, for example, by amending the claim or by
making a showing of why the claim is patent eligible.\39\ Regardless of
whether an eligibility rejection is made, the USPTO personnel will also
evaluate the claim to determine whether it meets the other requirements
for patentability, such as novelty and non-obviousness and the
requirements under 35 U.S.C. 112.
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\39\ For more information on how examiners formulate rejections
for a lack of subject matter eligibility and evaluate applicant
responses thereto, see MPEP 2106.07 and its subparts.
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III. Update on Certain Areas of the USPTO's Patent Subject Matter
Eligibility Guidance Applicable to AI Inventions
While the Alice/Mayo test for analyzing subject matter eligibility
has not changed, the MPEP has been updated to consolidate and
incorporate all prior USPTO guidance and will continue to be updated as
appropriate (e.g., to include recent court decisions).\40\ Feedback
from our stakeholders indicates that when considering the subject
matter eligibility of AI inventions, there are certain areas of
particular concern: (1) the evaluation of whether a claim recites an
abstract idea in Step 2A, Prong One; and (2) the evaluation of the
improvements consideration in Step 2A, Prong Two.
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\40\ Note, the current version of the MPEP [R-07.2022],
published in February 2023, was up-to-date as of July 31, 2022. The
revisions to MPEP 2103-2106.07(c) were to update case citations and
did not update the subject matter eligibility guidance in the MPEP
[R-10.2019], published in June 2020. See Change Summary and Title
Page for the 9th Edition, Rev. 07.2022 of the MPEP.
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Therefore, this guidance update provides a discussion of how to
evaluate whether a claim recites an abstract idea (i.e., mathematical
concepts, certain methods of organizing human activity, and mental
processes) in Step 2A, Prong One based on the USPTO's current subject
matter eligibility guidance. This inquiry can be challenging for AI
inventions. This guidance update includes recent case law regarding
mathematical concepts, certain methods of organizing human activity,
and mental processes, which may be useful to USPTO personnel and
stakeholders in evaluating Step 2A, Prong One. In addition, this
guidance update provides further discussion of the evaluation of the
improvements consideration in Step 2A, Prong Two based on the USPTO's
current subject matter eligibility guidance. This discussion includes
an explanation of how to demonstrate an improvement for AI inventions
and recent case law that may be helpful in demonstrating such an
improvement.
A. Evaluation of Whether a Claim Is Directed to a Judicial Exception
(Step 2A)
Claims directed to nothing more than a judicial exception (i.e.,
abstract ideas, natural phenomena, and laws of nature) are not eligible
for patent protection.\41\ The Supreme Court has explained that the
judicial exceptions reflect the Court's view that abstract ideas, laws
of nature, and natural phenomena are ``the basic tools of scientific
and technological work,'' and are thus excluded from patentability
because ``monopolization of those tools through the grant of a patent
might tend to impede innovation more than it would tend to promote
it.'' \42\ Even if the judicial exception is narrow (e.g., a particular
mathematical formula or detailed mental process), the Court has held
that a claim may not preempt that judicial exception.\43\
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\41\ See MPEP 2106.04, subsection I.
\42\ Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216
(2014) (quoting Association for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013), and Mayo Collaborative
Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71 (2012)).
\43\ See Mayo, 566 U.S. at 79-80, 86-87 (2012). See also SAP
Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1169 (Fed. Cir. 2018)
(discussing how claims narrowing mathematical resampling operations
to particular types of resampling ``add nothing outside the abstract
realm'' and are still directed to ineligible abstract ideas).
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In applying subject matter eligibility law, the USPTO has developed
the analysis discussed in section II above that uses a two-pronged
inquiry to implement the first step of Alice (Step 2A of the USPTO's
subject matter eligibly analysis). The first inquiry (Step 2A, Prong
One, which asks whether a claim recites a judicial exception) is used
to determine whether the claim is the type of claim that warrants
further analysis under the law. There is no need to move to Step 2A,
Prong Two if the claim does not recite a judicial exception in the
first instance. Since all inventions ``at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas,'' \44\ ``an invention is not rendered ineligible for
patent simply because it involves'' a judicial exception.\45\ If the
claim recites a judicial exception, that alone is not enough for the
claim to be ``directed to'' the judicial exception. Under Step 2A,
Prong Two, USPTO personnel must assess whether the claim as a whole
integrates the judicial exception into a practical application of the
exception, which is discussed below in section III.A.2.\46\
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\44\ Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71 (2012).
\45\ See Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208,
217 (2014) (``[W]e tread carefully in construing this exclusionary
principle lest it swallow all of patent law.'').
\46\ MPEP 2106.04, subsection II.A.2.
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1. Evaluation of Whether a Claim Recites an Abstract Idea (Step 2A,
Prong One)
While it is common for claims to AI inventions to involve abstract
ideas, USPTO personnel must draw a distinction between a claim that
``recites'' an abstract idea (and thus requires further eligibility
analysis) and one that merely involves, or is based on, an abstract
idea.\47\ To assist in this evaluation, MPEP 2106.04(a)(1) provides
non-limiting hypothetical examples of claims that do and do not recite
an abstract idea. The USPTO has also issued examples that illustrate an
analysis of claims that do and do not recite an abstract idea.\48\
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\47\ This guidance update specifically addresses the abstract
idea exception, which is discussed in MPEP 2106.04(a). This guidance
update does not specifically address laws of nature, natural
phenomena, and products of nature, which are discussed in MPEP
2106.04(b)-(c).
\48\ These examples are available at www.uspto.gov/PatentEligibility.
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This guidance update provides the following additional non-limiting
hypothetical examples of claims that do not recite an abstract idea:
An application-specific integrated circuit (ASIC) for an
artificial neural network, the ASIC comprising: a plurality of neurons
organized in an array, wherein each neuron comprises a register, a
processing element and at least one input, and a plurality of synaptic
circuits, each synaptic circuit including a memory for storing a
synaptic weight, wherein each neuron is connected to at least one other
neuron via one of the plurality of synaptic circuits.\49\
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\49\ Example 47 (claim 1), available at www.uspto.gov/PatentEligibility.
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[[Page 58135]]
A system for monitoring health and activity in a herd of
dairy livestock animals comprising: a memory; a processor coupled to
the memory programmed with executable instructions, the instructions
including a livestock interface for obtaining animal-specific
information for a plurality of animals in the herd, wherein the animal-
specific information comprises animal identification data and at least
one of body position data, body temperature data, feeding behavior
data, and movement pattern data; and a herd monitor including (a) a
radio frequency reader for collecting the animal-specific information
from a plurality of animal sensors attached to the animals in the herd
when the animal sensors are within proximity to the radio frequency
reader, each animal sensor having a radio frequency transponder, and
(b) a transmitter for transmitting the collected animal-specific
information to the livestock interface.\50\
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\50\ Example 46 (claim 4), available at www.uspto.gov/PatentEligibility.
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A treatment method comprising administering rapamycin to a
patient identified as having Nephritic Autoimmune Syndrome Type 3 (NAS-
3).\51\
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\51\ Example 43 (claim 5), available at https://www.uspto.gov/PatentEligibility.
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MPEP 2106.04(a) instructs USPTO personnel to ``determine whether a
claim recites an abstract idea by (1) identifying the specific
limitation(s) in the claim under examination that the examiner believes
recites an abstract idea, and (2) determining whether the identified
limitations(s) fall within at least one of the groupings of abstract
ideas'' (i.e., mathematical concepts, certain methods of organizing
human activity, or mental processes) distilled from the relevant case
law.\52\ The groupings of abstract ideas are defined in MPEP
2106.04(a)(2). In addition to the examples already present in MPEP
2106.04(a)(2), the following examples from Federal Circuit cases are
informative. MPEP 2106.04(a)(2) will be updated in due course to
include these examples, and the addition of these examples does not
change the boundaries of the abstract idea groupings.
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\52\ See MPEP 2106.04(a) for additional information on abstract
ideas.
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a. Mathematical Concepts
The USPTO's guidance on the ``mathematical concepts'' abstract idea
grouping is found in MPEP 2106.04(a)(2), subsection I. USPTO guidance
defines the mathematical concepts abstract idea grouping as
mathematical relationships, mathematical formulas or equations, and
mathematical calculations.\53\ A claim does not recite a mathematical
concept (i.e., the claim limitations do not fall within the
mathematical concept grouping) if it is only based on or involves a
mathematical concept.\54\
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\53\ See MPEP 2106.04(a)(2), subsection I for further discussion
of the mathematical concepts grouping.
\54\ Id.
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As an example of claims that do not recite an abstract idea (e.g.,
a mathematical concept) or other judicial exception, in XY, LLC v.
Trans Ova Genetics, 968 F.3d 1323, 1330-32 (Fed. Cir. 2020), the
Federal Circuit determined that claims to a method of operating a flow
cytometry apparatus to classify and sort particles into at least two
populations in real time to more accurately classify similar particles
was not directed to ``the abstract idea of using a `mathematical
equation that permits rotating multi-dimensional data' '' even though
they may have involved mathematical concepts.\55\ Applying the USPTO's
guidance to the facts of this case would likewise result in a
conclusion that the claims are not directed to an abstract idea.
Specifically, these claims are eligible as not reciting a judicial
exception at Step 2A, Prong One.
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\55\ See also MPEP 2106.04(a)(2), subsection I, which discusses
Thales Visionix, Inc. v. United States, 850 F.3d 1343, 1348-49 (Fed.
Cir. 2017) as an example of a claim that does not recite a
mathematical concept.
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b. Certain Methods of Organizing Human Activity
The USPTO's guidance on the ``certain methods of organizing human
activity'' abstract idea grouping is found in MPEP 2106.04(a)(2),
subsection II and describes concepts related to fundamental economic
principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the
form of contracts, legal obligations, advertising, marketing or sales
activities or behaviors, and business relations); and managing personal
behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions). The
term ``certain'' qualifies the ``certain methods of organizing human
activity'' grouping, and as a result, not all methods of organizing
human activity are abstract ideas.\56\ In addition, except in rare
circumstances, this grouping should not be expanded beyond the activity
within the enumerated sub-groupings of fundamental economic principles
or practices, commercial or legal interactions, and managing personal
behavior or relationships or interactions between people.\57\
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\56\ MPEP 2106.04(a)(2), subsection II (citation omitted).
\57\ MPEP 2106.04(a)(3) explains the rare circumstances in which
this grouping could be expanded.
---------------------------------------------------------------------------
A discussion of concepts that are ``certain methods of organizing
human activity'' is found in MPEP 2106.04(a)(2), subsection II. Below,
the USPTO provides three additional examples of ``certain methods of
organizing human activity'' based on Federal Circuit cases, which are
not intended to change the scope of this abstract idea grouping:
Claims to ``collect[ing] information on a user's movements
and location history [and] electronically record[ing] that data''
(i.e., ``creating a digital travel log''), Weisner v. Google LLC, 51
F.4th 1073, 1082 (Fed. Cir. 2022) (citation omitted). Under the USPTO's
guidance, this is an example of ``managing personal behavior or
relationships or interactions between people.''
A claim to ``monitoring the location of a mobile thing and
notifying a party in advance of arrival of that mobile thing [ ]
amount[s] to nothing more than the fundamental business practice of
providing advance notification of the pickup or delivery of a mobile
thing,'' agreeing with the district court that ``business practices
designed to advise customers of the status of delivery of their goods
have existed at least for several decades, if not longer.'' Elec.
Commc'n Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178, 1181
(Fed. Cir. 2020). Under the USPTO's guidance, this is an example of a
fundamental economic principle or practice.
Claims to methods for detecting fraud in financial
transactions during a payment clearing process, including determining
when there is a match between two financial records, sending a
notification to a bank with authorization to process the financial
transaction when there is a match, and sending a notification to a bank
to not process the financial transaction when there is not a match,
Bozeman Fin. LLC v. Fed. Reserve Bank of Atlanta, 955 F.3d 971, 978
(Fed. Cir. 2020). Under the USPTO's guidance, this is an example of a
fundamental economic principle or practice.
c. Mental Processes
The USPTO's guidance on the ``mental processes'' abstract idea
grouping is found in MPEP 2106.04(a)(2), subsection III. As
[[Page 58136]]
explained in the MPEP, ``[t]he courts consider a mental process
(thinking) that `can be performed in the human mind, or by a human
using a pen and paper' to be an abstract idea.'' \58\ USPTO guidance
defines the ``mental processes'' abstract idea grouping as concepts
performed in the human mind and explains that claims recite a mental
process when they contain limitations that can practically be performed
in the human mind, including, for example, observations, evaluations,
judgments, and opinions.\59\ In contrast, USPTO guidance explains that
claims do not recite a mental process when they contain limitations
that cannot practically be performed in the human mind, for instance
when the human mind is not equipped to perform the claim
limitations.\60\ The mental processes grouping is not without limits,
and as such, claim limitations that only encompass AI in a way that
cannot practically be performed in the human mind do not fall within
this grouping.
---------------------------------------------------------------------------
\58\ MPEP 2106.04(a)(2), subsection III (citing CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011)).
\59\ MPEP 2106.04(a), subsection III.A.
\60\ MPEP 2106.04(a)(2), subsection III.A (citing SRI Int'l,
Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019)
(declining to identify the claimed collection and analysis of
network data as abstract because ``the human mind is not equipped to
detect suspicious activity by using network monitors and analyzing
network packets as recited by the claims''); CyberSource, 654 F.3d
at 1376 (distinguishing Research Corp. Techs. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int'l Trade
Comm'n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions
that ``could not, as a practical matter, be performed entirely in a
human's mind'').
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A discussion of concepts performed in the human mind, as well as
concepts that cannot practically be performed in the human mind and
thus are not ``mental processes,'' is found in MPEP 2106.04(a)(2),
subsection III.A. Below, the USPTO provides further examples based on
recent Federal Circuit cases. These additional examples are not
intended to change the scope of the ``mental processes'' abstract idea
grouping.
Under the USPTO's guidance, an additional example of a claim that
does not recite a mental process because it cannot be practically
performed in the human mind includes:
A claim to ``a specific, hardware-based RFID serial number
data structure'' (i.e., an RFID transponder), where the data structure
is uniquely encoded (i.e., there is ``a unique correspondence between
the data physically encoded on the [RFID transponder] with pre-
authorized blocks of serial numbers''), ADASA Inc. v. Avery Dennison
Corp., 55 F.4th 900, 909 (Fed. Cir. 2022).
Additional examples of mental processes are:
A claim to a method of ``(1) receiving user information;
(2) providing a polling question; (3) receiving and storing an answer;
(4) comparing that answer to generate a `likelihood of match' with
other users; and (5) displaying certain user profiles based on that
likelihood'' could practically be performed in the human mind (i.e.,
``[a] human mind could review people's answers to questions and
identify matches based on those answers''), Trinity Info Media, LLC v.
Covalent, Inc., 72 F.4th 1355, 1362 (Fed. Cir. 2023).
A claim to ``the collection of information from various
sources (a Federal database, a State database, and a case worker) and
understanding the meaning of that information (determining whether a
person is receiving SSDI benefits and determining whether they are
eligible for benefits under the law),'' where `` `[t]hese steps can be
performed by a human, using ``observation, evaluation, judgment, [and]
opinion,'' because they involve making determinations and
identifications, which are mental tasks humans routinely do,' '' and
thus can practically be performed in the human mind, In re Killian, 45
F.4th 1373, 1379 (Fed. Cir. 2022).
Claims to ``the use of an algorithm-generated content-
based identifier to perform the claimed data-management functions,''
which include limitations to ``controlling access to data items,''
``retrieving and delivering copies of data items,'' and ``marking
copies of data items for deletion,'' where the claims cover ``a medley
of mental processes that, taken together, amount only to a multistep
mental process,'' such that the steps can be practically performed in
the human mind, PersonalWeb Techs. LLC v. Google LLC, 8 F.4th 1310,
1316-18 (Fed. Cir. 2021).
2. Evaluation of Whether the Claim as a Whole Integrates the Judicial
Exception Into a Practical Application of That Exception (Step 2A,
Prong Two)
If it is determined that a claim recites a judicial exception in
Step 2A, Prong One, USPTO personnel evaluate whether the claim as a
whole integrates the recited judicial exception into a practical
application of the exception, and thus is not ``directed to'' the
judicial exception, in Step 2A, Prong Two.\61\ USPTO personnel evaluate
integration into a practical application by: (1) identifying whether
there are any additional elements recited in the claim beyond the
judicial exception(s), and (2) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application of that exception. As explained
in MPEP 2106.04(d), subsection III, the Step 2A, ``Prong Two analysis
considers the claim as a whole. That is, the limitations containing the
judicial exception as well as the additional elements in the claim
besides the judicial exception need to be evaluated together to
determine whether the claim integrates the judicial exception into a
practical application.''
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\61\ See MPEP 2106.04(d) for further discussion on evaluating
whether a judicial exception is integrated into a practical
application of that exception in Step 2A, Prong Two.
---------------------------------------------------------------------------
This analysis is performed using one or more considerations
identified by the courts, such as whether the additional elements
improve the functioning of a computer or another technology, whether
the claim generally links the judicial exception to a particular
technological environment or field of use, or whether there is a step
in the claim that applies or uses the judicial exception to effect a
particular treatment or prophylaxis for a disease or medical
condition.\62\ Step 2A, Prong Two specifically excludes consideration
of whether the additional elements represent well-understood, routine,
conventional activity. Instead, analysis of well-understood, routine,
conventional activity is done in Step 2B. A claim that integrates a
judicial exception into a practical application of the exception will
apply, rely on, or use the judicial exception in a manner that imposes
a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize or preempt the
judicial exception.
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\62\ The considerations evaluated in Step 2A, Prong Two are
discussed in MPEP 2106.04(d), subsection I, and in more detail in
MPEP 2106.04(d)(1), 2106.04(d)(2), 2106.05(a)-(c), and 2106.05(e)-
(h).
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a. Evaluating Improvements in the Functioning of a Computer, or an
Improvement to Any Other Technology or Technical Field
One way to demonstrate integration of the judicial exception into a
practical application is to show that the claimed invention improves
the functioning of a computer or improves another technology or
technical field.\63\ ``This consideration has also been referred to as
the search for a technological solution to a technological problem.''
\64\
[[Page 58137]]
The application or use of the judicial exception in this manner
meaningfully limits the claim by going beyond generally linking the use
of the judicial exception to a particular technological environment,
and thus transforms the claim into patent eligible subject matter.\65\
Such claims are eligible at Step 2A because they are not ``directed
to'' the recited judicial exception.
---------------------------------------------------------------------------
\63\ See MPEP 2106.04(d)(1) for a discussion of the improvements
consideration in Step 2A, Prong Two.
\64\ MPEP 2106.05(a).
\65\ Diamond v. Diehr, 450 U.S. 175, 187-88 (1981) (Reasoning
that ``a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula,''
and holding that a ``process of curing synthetic rubber'' that
``employ[ed] a well-known mathematical equation'' was patent
eligible, even though the equation itself was not).
---------------------------------------------------------------------------
Many claims to AI inventions are eligible as improvements to the
functioning of a computer or improvements to another technology or
technical field. While the courts have not provided an explicit test
for how to evaluate the improvements consideration, they have instead
illustrated how it is evaluated in numerous decisions. These decisions
and a detailed explanation of how USPTO personnel should evaluate this
consideration are provided in MPEP sections 2106.04(d)(1) and
2106.05(a).
A key point of distinction to be made for AI inventions is between
a claim that reflects an improvement to a computer or other technology
described in the specification (which is eligible) and a claim in which
the additional elements amount to no more than (1) a recitation of the
words ``apply it'' (or an equivalent) or are no more than instructions
to implement a judicial exception on a computer, or (2) a general
linking of the use of a judicial exception to a particular
technological environment or field of use (which is ineligible).\66\
``An important consideration in determining whether a claim improves
technology is the extent to which the claim covers a particular
solution to a problem or a particular way to achieve a desired outcome,
as opposed to merely claiming the idea of a solution or outcome.'' \67\
AI inventions may provide a particular way to achieve a desired outcome
when they claim, for example, a specific application of AI to a
particular technological field (i.e., a particular solution to a
problem).\68\ In these situations, the claim is not merely to the idea
of a solution or outcome and amounts to more than merely ``applying''
the judicial exception or generally linking the judicial exception to a
field of use or technological environment. In other words, the claim
reflects an improvement in a computer or other technology.\69\
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\66\ See MPEP 2106.05(a), (f), and (h) for guidance on these
considerations.
\67\ MPEP 2106.05(a).
\68\ Example 47, claim 3, claiming a specific application of AI
to the field of network intrusion detection; and Example 48, claims
2 and 3, claiming a specific application of AI to the field of
speech signal processing, which are available at uspto.gov/PatentEligibility.
\69\ MPEP 2016.05(a); MPEP 2106.05(a), subsection II (``it is
important to keep in mind that an improvement in the abstract idea
itself (e.g., a recited fundamental economic concept) is not an
improvement in technology''). See also in re Board of Trs. of Leland
Stanford Junior Univ., 991 F.3d 1245, 1251 (Fed. Cir. 2021)
(Stanford II) (concluding that the claims are ineligible because the
improvement in ``the accuracy of a mathematically calculated
statistical prediction'' is an improvement to the abstract idea
(i.e., mathematical calculations) rather than an improvement to
another technology).
---------------------------------------------------------------------------
An improvement in the judicial exception itself is not an
improvement in the technology.\70\ For example, in In re Board of
Trustees of Leland Stanford Junior University, 989 F.3d 1367, 1370,
1373 (Fed. Cir. 2021) (Stanford I), the applicant claimed methods of
resolving a haplotype phase involving steps of determining an
inheritance state based on received allele data using a Hidden Markov
Model. The applicant further claimed determining a haplotype phase
based on the pedigree data, the earlier-calculated inheritance state,
transition probability data, and population linkage disequilibrium data
using a computer system.\71\ The applicant argued that the claimed
process was an improvement over prior processes because it ``yields a
greater number of haplotype phase predictions,'' but the court found it
was not ``an improved technological process'' and instead was an
improved ``mathematical process.'' \72\ The court explained that such
claims were directed to an abstract idea because they describe
``mathematically calculating alleles' haplotype phase,'' like the
``mathematical algorithms for performing calculations'' in prior
cases.\73\ Notably, the Federal Circuit found that the claims did not
reflect an improvement to a technological process, which would render
the claims eligible.\74\
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\70\ See MPEP 2106.05(a), subsection II.
\71\ Id.
\72\ Id. at 1373.
\73\ Id. at 1372-73.
\74\ Id. at 1373-74.
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In contrast, an improvement can be provided by one or more
additional elements or by the additional element(s) in combination with
the recited judicial exception.\75\ An exemplary case illustrating such
an improvement is McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299 (Fed. Cir. 2016), which is discussed extensively in the MPEP
at, e.g., 2106.04(d)(1) and 2106.05(a). In McRO, the claims were to a
rule-based system to animate the lip synchronization and facial
expressions of three-dimensional characters.\76\ The Federal Circuit
relied on the specification's explanation of how the claimed rules
enabled the automation of specific animation tasks that previously
could not be automated.\77\ The court indicated that it was the
incorporation of the particular claimed rules in computer animation
that ``improved [the] existing technological process.'' \78\ The court
also noted that the claims at issue described a specific way (use of
particular rules to set morph weights and transitions through phonemes)
to solve the problem of producing accurate and realistic lip
synchronization and facial expressions in animated characters, rather
than merely claiming the idea of a solution or outcome, and thus the
claims reflected the disclosed improvement in computer animation.\79\
Therefore, the court found the claims were not directed to an abstract
idea.\80\ USPTO personnel accordingly should analyze the claim as a
whole when determining whether the claim provides an improvement to the
functioning of a computer or an improvement to another technology or
technical field.\81\
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\75\ MPEP 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys.,
Inc., 879 F.3d 1299, 1303-04 (Fed. Cir. 2018)) and 2106.05(a).
\76\ McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299, 1307 (Fed. Cir. 2016).
\77\ Id. at 1313.
\78\ Id. at 1314-15.
\79\ Id. at 1315.
\80\ Id. at 1316.
\81\ MPEP 2106.04(d)(1); MPEP 2106.05(a).
---------------------------------------------------------------------------
Examples of claims that improve technology and are not directed to
a judicial exception are found in MPEP sections 2106.04(d)(1) and
2106.05(a). In addition, below the USPTO identifies other examples of
claims that improve technology and are not directed to a judicial
exception from Federal Circuit decisions:
Claim to ``a specific, hardware-based RFID serial number
data structure'' (i.e., an RFID transponder), where the data structure
is uniquely encoded (i.e., there is ``a unique correspondence between
the data physically encoded on the [RFID transponder] with pre-
authorized blocks of serial numbers''), such that it is ``a hardware-
based data structure focused on improvements to the technological
process by which data is encoded,'' ADASA, 55 F.4th at 909.
Claims to performing error correction and detection
encoding where the information bits appear in a variable number of
subsets were directed to an improvement of encoding data that relies in
part on irregular
[[Page 58138]]
repetition and not an abstract idea, Cal. Inst. of Tech. v. Broadcom
Ltd, 25 F.4th 976, 988 (Fed. Cir. 2022).
Claims to a packet monitor to identify disjointed
connection flows as belonging to the same conversational flow were
directed to an improvement in computer technology and not an abstract
idea, Packet Intel. LLC v. NetScout Sys., Inc., 965 F.3d 1299, 1308-10
(Fed. Cir. 2020).
Claims to a primary station for use in a communication
system, where an additional data field is added to enable the primary
station to simultaneously send inquiry messages and poll parked
secondary stations, were directed to an improvement in computer
functionality, namely the reduction of latency experienced by parked
secondary stations in communication systems and not an abstract idea,
Uniloc USA, Inc. v. LG Elec. USA, Inc., 957 F.3d 1303, 1305, 1307-08
(Fed. Cir. 2020).
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, CardioNet, LLC v.
InfoBionic, Inc., 955 F.3d 1358, 1368-69 (Fed. Cir. 2020).
Claims to varying the way check data is generated by
modifying the permutation applied to different data blocks were
directed to an improvement in a technological process for detecting
systemic errors in data transmission and not an abstract idea,
Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1150-51 (Fed.
Cir. 2019).
IV. Applicability of the USPTO Eligibility Guidance to AI-Assisted
Inventions
For the subject matter eligibility analysis under 35 U.S.C. 101,
whether an invention was created with the assistance of AI is not a
consideration in the application of the Alice/Mayo test and USPTO
eligibility guidance and should not prevent USPTO personnel from
determining that a claim is subject matter eligible. In other words,
how an invention is developed is not relevant to the subject matter
eligibility inquiry. Instead, the inquiry focuses on the claimed
invention itself and whether it is the type of innovation eligible for
patenting.
In contrast, the USPTO recently issued guidance on inventorship for
AI-assisted inventions, which are inventions created by natural persons
using one or more AI systems.\82\ The guidance explains that current
statutes (e.g., 35 U.S.C. 101 and 115) do not provide for recognizing
contributions by tools such as AI systems (or other advanced systems)
for inventorship purposes, even if those AI systems were instrumental
in the creation of the invention. However, AI-assisted inventions are
not categorically unpatentable. Patent protection may be sought for AI-
assisted inventions where one or more persons made a significant
contribution to the claimed invention.
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\82\ Inventorship Guidance for AI-Assisted Inventions, 89 FR
10043, 10044 FN1 (February 13, 2024).
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V. Examples
The USPTO has developed new subject matter eligibility examples for
AI inventions. The examples provide exemplary subject matter
eligibility analyses under 35 U.S.C. 101 of hypothetical claims.
Example 47 illustrates the application of the eligibility analysis
to claims that recite limitations specific to AI, particularly the use
of an artificial neural network to identify or detect anomalies.
Example 48 illustrates the application of the eligibility analysis to
claims that recite AI-based methods of analyzing speech signals and
separating desired speech from extraneous or background speech. Example
49 illustrates the analysis of method claims reciting an AI model that
is designed to assist in personalizing medical treatment to the
individual characteristics of a particular patient.
These examples are intended to assist USPTO personnel and the
public in understanding the proper application of the USPTO's subject
matter eligibility guidance in certain fact-specific situations, such
as whether a claim recites an abstract idea or whether a claim
integrates the abstract idea into a practical application, because the
claimed invention improves the functioning of a computer or another
technology or technical field and thus is not ``directed to'' the
abstract idea. The USPTO has also produced an updated index of
examples, which includes examples issued prior to the publication of
this guidance. A copy of the examples and the index are available on
the USPTO's website (www.uspto.gov/PatentEligibility).
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2024-15377 Filed 7-16-24; 8:45 am]
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