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For the last decade, securing patent protection for software inventions has been challenging to say the least. Claims directed to inventive and useful software-related inventions such as artificial intelligence (AI) are often invalidated or rejected as per se ineligible for patenting under 35 U.S.C. §101, the statute that identifies the four patentable categories of inventions (process, machine, article of manufacture, and composition of matter). The most common reason for rejection/invalidation is that the claims are allegedly directed to overly "abstract" concepts instead of to definable inventions, rather than for lack of novelty or as being legally "obvious" modifications of earlier inventions. However, the United States Patent and Trademark Office (USPTO) may be easing restrictions on patenting software-based inventions, presenting an opportunity to industries that rely on software and AI.
In recent months, the USPTO has signaled a shift in how the Office will address statutory eligibility in examining software and other fundamental technologies. In August of 2025, the Office issued a Memorandum1 clarifying how patent examiners are to apply the existing subject matter eligibility guidance set forth in the Manual of Patent Examining Procedure (MPEP). The Memorandum was directed to Technology Centers 2100, 2600, and 3600 (Computer Architecture Software and Information Security, Communications, and eCommerce), which are the Technology Centers that examine the majority of software/AI applications. The Memorandum takes a significantly more applicant-friendly stance and in doing so provides useful guidance to patent applicants on avoiding or rebutting Section 101 rejections.
The Memorandum does not expressly countermand any prior USPTO guidance on examination of software-based inventions, but is instead styled as a reminder to patent examiners of how to properly apply existing guidance. In particular, the Memorandum places limits on examiner invocation of the mental process-abstract idea exception to patent eligibility, emphasizing that if a claim limitation cannot practically be performed by the human mind then the limitation should not be classified as a mental process. Specific to AI, the Memorandum states that "Claim limitations that encompass AI in a way that cannot be practically performed in the human mind do not fall within this grouping [mental process]." Examiners are reminded that claims that merely "involve" an abstract idea as opposed to "reciting" and therefore potentially pre-empting the abstract idea do not fall under the abstract idea exception. Examiners are reminded that claims must be evaluated "as a whole" for statutory eligibility, rather than considering individual limitations "in a vacuum, completely separate from the recited judicial exception" while disregarding other limitations as being "recited at a high level of generality" as was common in prior practice.
The Memorandum further states that AI-related claims may be eligible if they recite an improvement to computer technology or another area of technology, and it reminds examiners to consult the specification to determine whether such improvements are disclosed. Examiners are specifically cautioned against oversimplifying the claimed subject matter to justify a rejection as directed to a mental process or abstract idea. Finally, the Memorandum states that examiners should reject claims on statutory ineligibility grounds only when "it is more likely than not (i.e., more than 50%) that the claim is ineligible." Examiners are cautioned not to issue rejections simply because they are uncertain that a claim is eligible. This "preponderance" standard should prove favorable to applicants if applied consistently by patent examiners.
The USPTO has issued further indications that analysis of subject matter eligibility has entered a more applicant-friendly era. In Ex parte Desjardins et al.,2 a USPTO Appeals Review Panel (ARP) sua sponte vacated a Patent Trial and Appeal Board (PTAB) rejection of AI-related claims under Section 101. The Desjardins panel stated that the eligibility analysis required the PTAB to "evaluate the significance of the additional elements relative to the invention," and noted that "the ultimate question is whether the [judicial] exception is integrated into a practical application" (citing the Manual of Patent Examining Procedure §2106.04(d)(II)). The panel further stated:
"Categorically excluding AI innovations from patent protection in the United States jeopardizes America's leadership in this critical emerging technology. Yet, under the [PTAB] panel's reasoning, many AI innovations are potentially unpatentable – even if they are adequately described and nonobvious – because the [PTAB] panel essentially equated any machine learning with an unpatentable 'algorithm' and the remaining additional elements as 'generic computer components,' without adequate explanation ... Examiners and panels should not evaluate claims at such a high level of generality."
Finally, the ARP stated:
"[A]t the same time, the claims at issue stand rejected under [35 U.S.C.] §103 [obviousness]. This case demonstrates that §§102 [anticipation], 103, and 112 [indefiniteness, written description, and enablement] are the traditional and appropriate tools to limit patent protection to its proper scope. These statutory provisions should be the focus of examination."
Reflecting prior opinions of many in the industry, the patent bar, and certain courts, the ARP appears to suggest that patent-eligibility should remain a low bar and a threshold test rather than a significant bar to patentability.
Takeaways:
While USPTO guidance and actions are not binding on Article III courts, they do influence examination practice. In the near term, applicants can expect fewer subject matter eligibility rejections for well crafted claims involving software, AI, and machine learning. To reduce the risk of Section 101 rejections, patent applicants should emphasize that the inventions as claimed apply any "abstract idea" is applied to achieve a practical, useful result, rather than merely reciting the abstract idea. Additionally, ensure the specification clearly details the technological advantages of multiple features of the invention. This strengthens the argument that the claims represent a genuine improvement to the underlying technology.
Footnotes
1. Reminders on evaluating subject matter eligibility of
claims under 35 U.S.C. 101, Charles Kim, Deputy Commissioner for
Patents, August 4, 2025.
2. Appeal 2024-000567 (September 26, 2025).
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