Evolution of USPTO AI Subject Matter Eligibility Guidance

The USPTO's approach to AI patent eligibility has fundamentally shifted from broad acceptance to requiring demonstrable technical improvements, creating both challenges and opportunities for patent practitioners in the AI sector.

The USPTO's guidance on subject matter eligibility for artificial intelligence has undergone a significant transformation from 2018 to 2025. The agency has shifted from a holding pattern that lasted from 2019 to 2023 into an active implementation phase, reflecting a maturation from experimental policy development to operational examination standards.

Sources: See sources 1-8

The evolution of AI analysis and subject matter eligibility at the USPTO has evolved to meet the rapid pace of AI innovation. The first phase of the evolution involved early recognition of AI's growing importance, as the Patent Office acknowledged the substantial increase in patent applications involving AI technology and realized the need to implement specialized forms of analysis and examination.[1]

Throughout this period, the office continued developing various policies, training programs, and examination memoranda that have evolved into today's current implementation framework. The USPTO is now implementing a more concrete strategy to address subject matter eligibility issues specific to artificial intelligence. [2] Following their July 2024 guidance, the agency established relevant factors for determining inventorship levels in AI-assisted inventions, specifically incorporating the established Pannu factors for inventorship analysis.[3]

Major Shifts in Patent Eligibility Standards

The most significant development in USPTO AI policy has been the evolution from broad patent eligibility (2019) to technical improvement requirements (2024-2025):

Period	Standard	Key Language	Eligibility Result
2019	General eligibility	"training the neural network"	Patent-eligible unless mathematical formulas explicitly recited [4]
2024	Technical improvement required	"training using backpropagation, gradient descent"	Presumptively abstract unless technological improvement shown [5]
2025	Refined implementation	Claims must show "apparent technological improvement"	Eligibility requires concrete technical benefits [2]

Current Framework: Four Core Analytical Principles

The August 2025 memo provides a concrete framework for examining AI inventions. The Patent Office has now moved into a mature implementation phase, issuing concrete guidance for analyzing and examining AI-related patent applications. The USPTO has implemented a four-part analytical framework with the following guiding principles [2]:

Hardware-based operations should not be categorized as mental processes. This recognition acknowledges that AI systems perform operations beyond human cognitive capabilities.

Claims that recite judicial exceptions require full eligibility analysis, while claims that merely involve judicial exceptions may bypass scrutiny. This distinction focuses examination resources on applications that explicitly invoke abstract concepts.

Technical improvements must be apparent from claim language and specifications. The USPTO now emphasizes demonstrable technological advancement rather than abstract AI implementation.

Focus on practical implementation over abstract categorization. The Office has moved beyond simply determining whether machine learning and AI training constitute abstract ideas. Instead, the Patent Office focuses on how AI tools, platforms, and developments are actually implemented to improve systems or provide technical enhancements.

Strategic Implications for Patent Practitioners

This evolution has significant implications for patent drafting strategy. Practitioners should focus on technological improvements rather than abstract AI processes when drafting claims. For example, rather than merely describing a machine learning model, practitioners should explain how the AI implementation improves specific technical aspects—such as enhancing noise reduction in microphone or speaker systems. The key is demonstrating how the system actually implements AI technology in ways that change technology for the better. [5]

Patent practitioners must ensure they provide concrete technical benefits and performance improvements within their specifications. Applications should clearly identify the technical problem the invention addresses, explain the technical solution provided, and demonstrate benefits over existing prior art or conventional approaches. Specifications must articulate not only what the AI system does but also how it provides measurable technological advancement. [5]

Conclusion

The USPTO's AI patent practice has evolved from experimental recognition (2018-2019) to systematic implementation of both policy frameworks and examination tools (2024-2025). The fundamental shift from broad neural network training eligibility to technical improvement requirements represents the most significant change in AI patent practice, requiring practitioners to adapt their prosecution strategies accordingly.

This timeline demonstrates the USPTO's commitment to balancing innovation incentives with patent quality, using both policy guidance and technological tools to achieve these objectives. Patent practitioners in AI, robotics, and semiconductor technologies must stay current with these rapidly evolving standards to effectively protect their clients' innovations. Sources:

1. USPTO, Inventing AI: Tracing the Diffusion of Artificial Intelligence with U.S. Patents (Oct. 2020), https://www.uspto.gov/sites/default/files/documents/OCE-DH-AI.pdf

2. U.S. Patent & Trademark Office, Memorandum on Subject Matter Eligibility (Aug. 4, 2025), https://www.uspto.gov/sites/default/files/documents/memo-101-20250804.pdf.

3. Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998)

4. U.S. Patent & Trademark Office, 2019 Revised Patent Subject Matter Eligibility Guidance (Jan. 7, 2019), https://www.uspto.gov/sites/default/files/documents/2019%20USPTO%20BM%20101-2019%20PEG.pdf.

5. 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, 89 Fed. Reg. 58129 (July 17, 2024), https://www.uspto.gov/sites/default/files/documents/ai-sme-update-2024.pdf

6. U.S. Patent & Trademark Office, Subject Matter Eligibility Examples: Abstract Ideas 37-42 (Jan. 7, 2019), https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_20190107.pdf.

7. U.S. Patent & Trademark Office, Subject Matter Eligibility: Public Views (June 2022), https://www.uspto.gov/sites/default/files/documents/USPTO-SubjectMatterEligibility-PublicViews.pdf.

8. Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. 10043 (Feb. 13, 2024).