USPTO Guidance on Patent Eligibility of AI

July, 25th, 2024

Categories: Blog Tags: 101, artificial intelligence, CAFC, CBM, computer, patent, software, USPTO, whipgroup

By Alan Harrison

The USPTO issued a Guidance Update, effective July 17, 2024,  to address the evolving landscape of patent eligibility, particularly in relation to artificial intelligence (AI). It seeks to clarify and update the criteria for determining what constitutes patentable subject matter under U.S. patent law, including inventions that involve AI technologies. It does not address the other popular issue of whether generative artificial intelligence can be an inventor.

Section C of the Guidance Update on Patent Subject Matter Eligibility claims to address the nuances of AI-related inventions, and to emphasize the importance of demonstrating that AI contributions are integrated into a practical application. The section provides examples to guide applicants in drafting claims that effectively showcase the practical utility of AI innovations.

Let’s look at one of those examples:

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.

The guidance references the USPTO Examples of patent in/eligible subject matter, specifically Example 46. The explanation of patent eligibility for this example claim says simply that “Claim 4 is eligible because it does not recite any judicial exceptions.”

Although the guidance supposedly is about AI, there is no AI component to the hypothetically patent-eligible claim about livestock monitoring. Similarly, there is no AI component to either of the other hypothetically patent-eligible claims. One of the other two hypothetically eligible claims is for a structure of an application-specific integrated circuit (ASIC) for use in a neural network. The third hypothetically eligible claim is for a treatment method using rapamycin.

As guidance on how to draft an eligible claim to AI-enabled subject matter, the USPTO’s Federal Register Notice is consistent with what we have found to be effective in prosecuting claims to any sort of software inventions: Focus on ways in which the software interacts with other components. The USPTO’s claim about the herd monitoring software exemplifies this approach.

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