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Artificial intelligence has both excited and scared people since the early days of robotics.1 The prospect of a benevolent helper robot is common in our culture as evidenced by the Jetsons' Rosey the Robot helper or R2-D2's assistance in the Star Wars saga. These kind and helpful machines starkly contrast Arnold Schwarzenegger's cyborg role in Terminator as self-aware robots attempt to eradicate the humans that created them. As a society we are not quite at the point where the average person has a robot to do their chores nor are we doomed by an army of machines trying to take us out (thankfully).
On August 4, 2025, the United States Patent and Trademark Office (USPTO) published a memo regarding the examination of patent applications concerning AI and machine-learning technology. This article explores that memo and the USPTO's latest guidance on how to handle AI-related inventions. For background, this article first addresses patentable subject matter under the U.S. Patent Act.
Patentable Subject Matter – Section 101 of the U.S. Patent Act
The body of patent law has its roots in the intellectual property clause of the U.S. Constitution.2 That concept is striking when considering today's state of technology and the Framers' foresight to drive innovation while writing with quill and ink by the light of an oil lamp in the late 1700s. The statutory backdrop for the types of innovations eligible for patent protection is outlined in 35 U.S.C. § 101. The specific statutory language contemplates patent eligibility for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”3 Section 101 is a fundamental first step in determining whether or not an innovation can even be protected by a patent.
Judicial Exceptions to Patentability Despite Section 101
The key categories of patentable subject matter are processes, machines, manufactures, and compositions of matter, but there are judicially created exceptions to patentability within these categories. The U.S. Supreme Court's Alice and Mayo decisions illustrate these exceptions in holding that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.”4 The exceptions to patentability are rooted in allowing all to use the building blocks of innovation while rewarding a patent to those that “integrate the building blocks into something more.”5 The inability to patent laws of nature or natural phenomena is best reasoned by the prospect that one cannot truly invent something that happens naturally. If a person discovers a plant previously unknown to humanity, it may have new or innovative uses, but the plant itself was not created by the “inventor.” The abstract idea exception also reinforces the concept that ideas themselves are not patentable.6 Patent Office examiners consider these exceptions when evaluating patent applications.
Application Analysis Step 2A
When evaluating a patent application, patent examiners rely on the Manual of Patent Examining Procedure (MPEP). A flowchart is incorporated into § 2106 of the MPEP that instructs examiners to engage in a multi-step analysis to determine if an application claims patent-eligible subject matter.7 Step 2A of this analysis focuses on whether the application is directed to a law of nature, natural phenomenon, or an abstract idea. If an application is directed to one of these exceptions, examiners then evaluate if the application recites additional elements that take the judicial exceptions and integrate them into a practical application.8 If the examiner determines that the application is directed towards a practical application, it will not be rejected on the basis it is related to a judicial exception.9
How does this apply to AI?
The abstract idea exception is further divided into categories of mathematical concepts, mental processes, and methods of organizing human activity. Software and AI patent applications often fall into the category of “abstract ideas” as these processes could, in theory, be performed mentally or manually and to avoid rejection must incorporate some type of limitation that prevents them from being a truly mental process.
The USPTO's Stance
Since a 2019 request for comments, the USPTO has been searching for the best way to adapt to AI applications and technology.10 AI's ability to be used as a tool for inventors and examiners while also being the subject matter of a patent have drawn attention from the USPTO.11 On August 4, 2025, the USPTO relayed information to examiners stressing the importance of proper application of Step 2A and the grounds for making a rejection.12 Additionally, this memo featured a reminder to examiners that if an application is a close call on whether it contains subject matter eligible for a patent, an examiner should only reject a claim if it is “more likely than not” subject matter ineligible.13 USPTO Director John Squires reiterated this framework in a recent rehearing decision in the case Ex Parte Desjardins.14
In Ex Parte Desjardins, the Patent Trial and Appeal Board had rejected an application for a method of training a machine learning model on the basis that it was an abstract idea that failed to integrate the idea into a practical application.15 Director Squires, however, disagreed with the Board, citing portions of the application that would directly improve an AI system's functioning.16 Squires went on to state the risk of “categorically excluding” AI innovations from patent protection and stating that other statutes on patentability (§§ 102, 103, and 112) are the traditional tools to limit the scope of protection of a patent – not § 101.17
While the USPTO's prior messaging to examiners seems to be more akin to reminders regarding how to treat AI applications, when coupled with Director Squires' opinion in Desjardins it seems the USPTO under Squires is softening the § 101 requirements to push more AI development and patent protection. The ability to secure a patent on subject matter that would typically be ineligible for patent protection creates new incentive for developers in the AI sector to innovate and apply for patent protection.
It's unclear yet whether this incentive will pay off, but the Desjardins opinion as well as examiner instruction highlight the larger push by the USPTO for US innovation to stay at the forefront of the AI boom.
TC's IP group regularly advises clients on patent issues. Please reach out to a member of TC's IP team if you have a patent issue.
Footnotes
1. The term “artificial intelligence” first gained popularity during a 1956 conference shortly after Alan Turing coined the “Turing Test” for determining whether a machine can exhibit human-like behavior. https://worldhistoryjournal.com/2025/08/02/history-of-artificial-intelligence/; https://plato.stanford.edu/entries/turing-test/.
2. U.S. CONST. art I, § 8, cl. 8.
3. 35 U.S.C. § 101.
4. Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus Lab'ys, Inc., 566 U.S. 66, 70 (2012).
5. Alice, 573 U.S. at 217.
6. Id. at 218.
7. United States Patent and Trademark Office, 2106 Patent Subject Matter Eligibility, available at https://www.uspto.gov/web/offices/pac/mpep/s2106.html.
8. United States Patent and Trademark Office, Patent Public Advisory Committee Quarterly Meeting: 2019 Patent Eligibility Guidance, 13, https://www.uspto.gov/sites/default/files/documents/20190207_PPAC_Revised_Guidance_for_Determining_Subject_Mat ter_Eligibility.pdf.
9. Id.
10. Request for Comments on Patenting Artificial Intelligence Inventions, 84 FR 44889 (August 27, 2019).
11. Inventorship Guidance for AI-Assisted Inventions, 89 FR 10043 (February 13, 2024); Inventorship Guidance for AIAssisted Inventions, 89 FR 10043 (February 13, 2024); Request for Comments Regarding the Impact of the Proliferation of Artificial Intelligence on Prior Art, the Knowledge of a Person Having Ordinary Skill in the Art, and Determinations of Patentability Made in View of the Foregoing, 89 FR 34217 (April 30, 2024).
12. United States Patent and Trademark Office, Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101, https://www.uspto.gov/sites/default/files/documents/memo-101-20250804.pdf.
13. Id. at 5.
14. Ex parte Desjardins, Patent Trial and Appeal Board, Appeal 2024-000567, https://www.uspto.gov/sites/default/files/documents/202400567-arp-rehearing-decision-20250926.pdf
15. Id. at 7
16. Id. at 9.
17. Id. at 9-10.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
