On July 17, 2024, the U.S. Patent and Trademark Office (USPTO) issued a guidance update (the “Update”) on patent subject matter eligibility to address innovation in critical and emerging technologies (ET), especially artificial intelligence (AI). The Update does not announce any new USPTO practice or procedure and is meant to be consistent with existing USPTO guidance. The Update focuses on two areas of the USPTO's subject matter eligibility analysis that are particularly relevant to AI inventions: (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 judicial exception into a practical application (at Step 2A, Prong Two of the USPTO's subject matter eligibility analysis). 
 
Recitation of an Abstract Idea – Step 2A, Prong One
 
The Update reiterates that the Alice/Mayo test for analyzing subject matter eligibility in Step 2A, Prong One has not changed. Whether a claim recites an abstract idea (i.e., mathematical concepts, certain methods of organizing human activity, and mental processes) is still considered in light of the USPTO's current subject matter eligibility guidance.
 
In reviewing the current state of practice under Step 2A, Prong One, the Update highlights three hypothetical examples which do not recite abstract ideas. These include a new hypothetical claim to an application-specific integrated circuit (ASIC) for an artificial neural network (part of new Example 47 issued as part of the Update), a previous example involving a system for monitoring health and activity in a herd of dairy livestock animals (included in Example 46 of the October 2019 Examples), and another previous example involving a treatment method comprising administering rapamycin to a patient identified as having a certain syndrome (included in Example 43 of the October 2019 Examples). The Update also includes a discussion of eight recent Federal Circuit decisions addressing the question of eligibility in the context of AI and related technologies.
 
Integration into a Practical Application – Step 2A, Prong Two
 
The Update also provides a relatively detailed discussion of the evaluation of improvements under 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 in the context of AI inventions, as well as a review of recent case law that may be helpful in demonstrating such an improvement. 
 
The Update re-emphasizes that an improvement in a judicial exception itself (e.g., a mathematical calculation or a mental process) does not constitute an improvement in technology for eligibility purposes. Instead, an improvement must be shown in one or more elements beyond the recited judicial exception. The Update also explains that an improvement to a computer or other technology should be claimed in manner that recites a specific way to achieve a desired outcome, as opposed to merely stating the desired solution or outcome. Merely "applying" the judicial exception, or generally linking the judicial exception to a field of use or technological environment, is insufficient for patent eligibility. The Update gives particular attention to the manner in which a claim might be crafted to recite a particular improvement to a particular technological field or application.
 
The Update further discusses six recent Federal Circuit cases all involving claims that were not ultimately found to be directed to a judicial exception. These cases include claims directed to: a specific hardware-based RFID serial number data structure, error correction and detection encoding, packet monitoring to identify disjointed connection flows, an improved communication system that reduced latency, a cardiac monitoring device that analyzes the variability in the beat-to-beat timing for certain cardiac conditions, and a method of detecting systemic errors using varying methods of generating check data. 
  
AI-Assisted Inventions
 
The guidance update also clarifies that the issue of AI-assisted inventions, which are inventions created by natural persons using one or more AI systems, is not a subject matter eligibility issue. Rather, the use of an AI system during the process of invention is an inventorship issue, and the Update refers to the USPTO's February 13, 2024 guidance on inventorship for AI-assisted inventions.

New Examples

The Update also introduces three new Examples (Examples 47-49), each of which includes claims that are, and are not, directed to a judicial exception, along with the USPTO’s analysis of each such claim in view of recent case law and prevailing practices within the USPTO. Example 47 illustrates the application of the eligibility analysis to the use of an artificial neural network to identify or detect anomalies, Example 48 illustrates the analysis of AI-based methods of analyzing speech signals and separating desired speech from extraneous or background speech, and 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.

Of particular interest is a consideration of how the analysis of Example 47 compares to the analysis previously provided with Example 39 (see Examples 37 to 42). While the Update does not provide a comparative analysis of these two Examples, it appears that the analysis provided with Example 39 has been abrogated to a certain extent. We further observe that this is not surprising given the USPTO’s steady pattern of limiting or otherwise minimizing the importance of Example 39 and its accompanying analysis since it was published in January 2019.
 
Conclusion
 
The Update announces no significant directional change from the USPTO’s current approach to patentability of AI inventions. Rather, the guidance appears to be a distillation of recent USPTO practice, and corresponding Federal Circuit case law, surrounding AI-based inventions and computer-implemented inventions generally. The new Examples provided with the Update, along with the guidance provided by the case law highlighted in the Update, will assist inventors as they attempt to secure patent protection for inventions including or AI-based features.