Patents

Subscribe to Patents via RSS

PatentNext Summary: The Desjardins decision, co-authored by new USPTO Director John Squires, signals a potential shift toward greater patent eligibility for AI and software innovations. By vacating a § 101 rejection and warning that “categorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology,” the Appeals Review Panel (ARP) emphasized that eligibility should not be used as a catch-all to reject claims better addressed under §§ 102, 103, and 112. For practitioners, the decision highlights the importance of describing concrete technical improvements in the specification, tying those improvements directly to the claim language, and framing claims as technological solutions rather than abstract ideas. This marks a potentially significant recalibration of the USPTO’s approach to AI-related claims under Director Squires’ leadership.

Continue Reading Artificial Intelligence Patent Claims Get a Boost: USPTO Director Vacates §101 Rejection in Desjardins

PatentNext Summary: The USPTO issued “Reminders” for examiners in Tech Centers 2100/2600/3600 addressing §101 eligibility for software and Artificial Intelligence(AI) / Machine  Learning (ML)-related inventions; while not changing the MPEP, the guidance is meant to sharpen examination practice. It clarifies Step 2A, Prong One by limiting “mental process” to what can be practically performed in the human mind—stating that AI claim limitations not performable mentally are not “mental processes”—and by distinguishing claims that merely involve a judicial exception (e.g., Example 39) from those that recite one (e.g., Example 47). For Step 2A, Prong Two, examiners must evaluate the claim as a whole to identify a practical application, giving weight to meaningful additional limitations and to improvements in computer capabilities or a technical field, even if the improvement is only implicit in the specification. The Reminders caution against oversimplified “apply it” rejections, require a preponderance of evidence for “close call” §101 rejections, and reinforce compact prosecution that fully addresses §§102/103/112 for every claim in the first action.

Continue Reading USPTO Issues “Reminders” Supporting AI and Software Patenting and instructing Patent Examiners on the Limits of Section 101 Patent Eligibility 

PatentNext Summary: In a precedential decision, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s §101 dismissal of patent claims relating to an automated system for dumbbell weight selection and adjustment, finding that the claims were not abstract under Alice step one and therefore are patent-eligible. The Federal Circuit held that…

PatentNext Summary: In Brightex Bio-Photonics, LLC v. L’Oreal USA, Inc., the U.S. District Court for the Northern District of California invalidated patent claims relating to AI-driven cosmetic recommendations, finding them directed to an abstract idea under 35 U.S.C. § 101. The court held that while the specification referenced artificial intelligence, the claims themselves failed…

PatentNext Summary: In two recent decisions, the Federal Circuit reaffirmed that merely applying artificial intelligence or digital techniques to a specific “field of use” does not satisfy patent eligibility under 35 U.S.C. § 101. In Recentive Analytics v. Fox Corp., claims directed to AI-assisted television scheduling were deemed abstract for lacking inventive implementation. Similarly, in…

PatentNext Summary: The Federal Circuit’s decision in Recentive Analytics, Inc. v. Fox Corp. found that applying generic machine learning techniques to a new environment, without a specific technological improvement, is patent-ineligible under 35 U.S.C. § 101. The court emphasized that claims must articulate concrete technological advancements rather than merely applying established methods to different domains.

Recent headlines suggest that prominent technology CEOs are tossing tepid water onto the quantum computing narrative, leading to a sell-off of quantum computing stocks in January 2025. However, quantum computing CEO’s disagree, asserting that commercial quantum computers are already here and delivering value to clients. While the timeline for widespread quantum utility remains debated, one…

Agentic AI is transforming artificial intelligence by enabling systems to act independently, making decisions and solving problems autonomously across various industries. Its potential rapid development poses unique challenges for intellectual property protection, requiring innovative strategies to ensure these advancements are effectively safeguarded within the evolving IP landscape.

Continue Reading Agentic AI: Transforming Industries and Navigating the Patent Frontier

PatentNext Summary: Generative Artificial Intelligence (GenAI) patent application filings continue to rise at the U.S. Patent and Trademark Office (USPTO), with a significant concentration in Tech Center 2100, which focuses on computer architecture and software, particularly AI and simulation technologies. GenAI inventions commonly face Section 103 (obviousness) and Section 101 (subject matter eligibility) rejections, with…

PatentNext Takeaway: When deciding whether to patent AI-based inventions or maintain them as trade secrets, key considerations include the extent of public disclosure and the detectability of the AI model. Deploying an AI model in consumer-facing devices or making its output public often supports patenting to secure exclusivity. On the other hand, low detectability and sensitive training data, such as personal or medical information, may favor trade secret protection. Balancing these factors alongside the need for sufficient disclosure to meet patent requirements allows businesses to safeguard their innovations while mitigating risks.

Continue Reading AI-based Inventions: Patenting vs. Trade Secret Considerations