The United States Patent and Trademark Office (USPTO) has unveiled updated Subject Matter Eligibility Guidance, focusing on artificial intelligence (AI) and emerging technologies. This guidance, effective July 17, 2024, aims to provide clarity and consistency in evaluating patent applications involving AI inventions. USPTO Director Kathi Vidal emphasized the office's commitment to innovation, stating that the office "remains committed to fostering and protecting innovation in critical and emerging technologies, including AI."

The guidance tackles a primary concern in AI patent applications: the risk of being categorized as abstract ideas. It clarifies that AI inventions are not automatically deemed abstract merely because they involve mathematical concepts or computations. Referencing XY, LLC v. Trans Ova Genetics, the guidance states that claims are not necessarily directed to abstract ideas simply because they "involved mathematical concepts." Additionally, drawing from ADASA Inc. v. Avery Dennison Corp., the USPTO communicated that patent claims should not be considered abstract mental processes when they contain limitations that "cannot be practically performed in the human mind." This distinction acknowledges the unique capabilities of AI systems that extend beyond human mental processes, providing clearer boundaries for patent eligibility in AI inventions.

The new guidance incorporates various detailed examples of claims that successfully navigate the abstract idea threshold.

AI's role in the inventive process has not changed since the USPTO's guidance in February. That guidance stated that AI-assisted inventions are not categorically unpatentable while emphasizing the importance of human contribution. USPTO Director Kathi Vidal explained in a recent interview, "we want people to innovate with and adopt AI, but we want to make sure we strike the right balance so that AI is used for innovation, but isn't used to lock up innovation." Ultimately, patents are designed to incentivize and reward human ingenuity. While AI can be a tool in the invention process, the patent system continues to require human contribution, maintaining its focus on human creativity and innovation.

The office said it will accept public comments on the guidance through Sept. 16.