[Updated USPTO Guidance] July 2024: Understanding patent eligibility can be challenging, especially with new technologies like AI. The United States Patent and Trademark Office (USPTO) released new Subject Matter Eligibility Examples in July 2024 to clarify this process. Here’s an overview of general concepts of patent ability and USPTO provided key examples. The examples include claims and explanations as to why those claims are either patent eligible or patent ineligible.
Key Concepts of Patent Eligibility
The USPTO evaluates patent claims based on their compliance with statutory requirements, which include:
- Statutory Categories: The invention must fall within the categories of process, machine, manufacture, or composition of matter. If the answer to Step 1 is no, then the claim is ineligible. If yes, move to Step 2.
- Judicial Exceptions: These are categories of subject matter that are not eligible for patenting, such as abstract ideas, laws of nature, and natural phenomena. If the answer to Step 2 is no, then the claim is eligible. If yes, assess if the claim integrates the exception into a practical application or provides an inventive concept. If it does, the claim is eligible; if not, it is ineligible.
The evaluation process involves a two-step analysis:
- Step 1: Determine if the claim falls within one of the statutory categories.
- Step 2: Assess if the claim involves a judicial exception, and if so, whether the claim recites additional elements that integrate the exception into a practical application or provides an inventive concept.
USPTO Provided Examples 47 and 48
Example 47: Anomaly Detection Using AI
- Claim 1: This claim involves an application-specific integrated circuit (ASIC) for an artificial neural network (ANN, a type of AI model). It’s patent eligible because it describes specific hardware components like neurons, registers, microprocessors, and synaptic circuits, falling within the statutory category of a machine without including any judicial exceptions like abstract ideas or mathematical concepts.
- Claim 2: This claim outlines a method using an ANN to receive and discretize data, train the ANN, detect and analyze anomalies, and output anomaly data. It’s not eligible because it primarily involves abstract ideas and mathematical concepts without integrating them into a practical application or providing an inventive concept beyond the abstract idea of using ANN to receive and analyze data.
- Claim 3: This claim uses an ANN to detect malicious network packets. It is patent eligible because it integrates the abstract idea into a practical application, improving network security and demonstrating a real improvement in the field.
Example 48: Speech Separation Technology
- Claim 1: This claim describes a method for converting a mixed speech signal into a spectrogram and using a deep neural network (DNN, a type of ANN) to determine embedding vectors. It’s not eligible as it primarily involves abstract mathematical concepts without practical application.
- Claim 2: This claim enhances Claim 1 by adding steps to partition embedding vectors, apply binary masks, synthesize speech waveforms, exclude certain speech signals, and transmit the result. It is patent eligible because it integrates the abstract idea into a practical application, improving the accuracy and quality of speech separation technology.
- Claim 3: This claim involves a non-transitory computer-readable storage medium with instructions to perform the speech separation method. It is patent eligible because it integrates the abstract idea into a practical application by improving speech-to-text transcription, offering a concrete solution to accurately transcribing speech in noisy environments.
Conclusion
The USPTO’s examples illustrate that patent eligibility depends on how claims are framed. Claims must either avoid judicial exceptions or, if they do involve abstract ideas, integrate them into practical applications or inventive concepts. For a deeper dive into these examples, visit Simplifying Patent Eligibility: A Dive into the USPTO’s Latest Examples.
Michael Jones is the managing member at Jones Intellectual Property. His practice specializes in all aspects of intellectual property, including patent, trademark, and copyright law. He can be reached at mjones@jonesipl.com.