Ben Volk Discusses USPTO’s Recent Guidance for AI Eligibility
July 17, 2024
Thompson Coburn partner Ben Volk was quoted in an IAM article on the United States Patent and Trademark Office (USPTO’s) latest AI subject matter eligibility guidance and how the patent office handles applications for AI technologies.
“Over the past couple of years, it has been like a case-by-case, examiner-by-examiner variation on the conclusions they draw for patent eligibility of AI-related inventions. You will have almost identical claims on very similar inventions in front of different examiners and some examiners will say, ‘this is eligible’, and other examiners will say, ‘this is not eligible’,” Ben said. “Now that there is a more detailed set of guidance and examples, I think we should start seeing more uniformity.”
He added that one particularly useful part of the 31-page guidance document covers determining eligibility for AI innovations dealing with the judicial exception on mathematical concepts.
Ben continued, “The patent office here drew a distinction and said a claim does not recite a mathematical concept if it is only based on or involves a mathematical concept. It is drawing a fine line there. You have to look deeper into what is being claimed to figure out if the applicant is actually claiming a practical application of improved technology.”
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