The United States Patent and Trademark Office (USPTO) took a bold step in July 2024 issuing important guidance designed to help evaluate AI-related patent claims. Notably, the USPTO guidance takes the position that AI-powered, or AI-influenced, inventions, when claimed appropriately, can be eligible for patent protections.
The USPTO guidance is a tacit acknowledgement that AI-centric patent applications have spiked to the point where targeted analysis on how to address AI-related issues is warranted. For context, the guidance is designed to help USPTO personnel and stakeholders develop a deeper understanding of the key factors that need to be analyzed when evaluating patent eligibility of AI inventions during proceedings in front of the USPTO. In addition, the USPTO guidance provides a series of AI-specific examples to help clarify how the USPTO will assess the subject matter eligibility for AI inventions.
Overview of the USPTO’s AI Guidance Update
The USPTO’s AI guidance is broken down into five sections. Each section addresses a different aspect of patent eligibility and the USPTO’s AI and emerging technology efforts. Let’s take a look at each section:
Section 1. Overview of Existing Patent Subject Matter Eligibility Guidance
The USPTO makes clear that its existing subject matter eligibility guidance applies to all technologies, including AI inventions. Though, it’s worth noting that the guidance fuses the criteria for eligibility into a single analysis, addressing whether a claimed invention falls into one of the four statutory categories, including:
- Processes
- Machines
- Manufactures, and
- compositions of matter
The guidance also addresses whether the claimed invention is directed to a judicial exception, such as an abstract idea, law of nature, and/or natural phenomena.
Section 2. Evaluation of AI Inventions
The USPTO guidance update provides specific instructions for evaluating AI inventions, including:
- Whether the claimed invention recites an abstract idea; and
- Whether the claimed invention integrates a judicial exception into a practical application.
Section 3. Abstract Ideas and AI Inventions
The USPTO guidance provides insights on how to distinguish between claims that simply involve an abstract idea and claims that recite an abstract idea. This is an important distinction when it comes to AI-centric inventions that often involve abstract ideas and concepts (e.g., mathematical equations and/or methods of organizing types of activities).
Section 4. Practical Application and Improvements
A key consideration in determining subject matter eligibility, according to the USPTO, is whether the claimed invention integrates a judicial exception into a practical application. This can be demonstrated by showing that the claimed invention improves the functioning of a computer or another technology or technical field.
The guidance highlights the importance of claims that provide a particular solution to a problem or a specific way to achieve a desired outcome, rather than merely claiming the idea of a solution. For example, claims to a rule-based system for animating lip synchronization and facial expressions in three-dimensional characters were found to improve existing technological processes and were thus eligible.
Section 5. AI-Assisted Inventions
The USPTO guidance clarifies that the method of invention creation, including the use of AI, is not a consideration in the subject matter eligibility analysis. Nevertheless, patent protection should only be sought for AI-assisted inventions where an individual, or individuals, made a significant contribution to the claimed invention.
Key Takeaways from the USPTO Guidance
Overall, the USPTO’s AI guidance highlights the fact that AI claims must go beyond mere data processing steps by including additional elements that result in tangible and practical outcomes. Viable claims need to emphasize how the integration of AI leads to specific technological advancements. For example, an applicant who can demonstrate that an AI model improves the functionality or performance of a system can strengthen their claim that the invention provides a practical utility, which is necessary for patent eligibility.
Have Questions? Contact an Experienced Patent Lawyer in Los Angeles
If you have questions about patent application process for an AI-centric invention, then now is the time to speak to an experienced and knowledgeable patent lawyer in Los Angeles with the Omni Legal Group. We are a respected patent law firm in Los Angeles and understand the complexities of IP and patent law. Whether it’s a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, the lawyers at Omni legal Group are ready and able to help.
Schedule a consultation today, call 855.433.2226 or visit www.OmniLegalGroup.com to learn more.