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ICYMI: USPTO Issues New §101 Guidance - “AI Examples 47 through 49”
One month ago, Voice of IP broke news of Section 101 rejections soaring at the USPTO and urged the USPTO to release new guidance for AI-related inventions:
Voice of IP has learned that the USPTO is currently working on new guidance for §101. It’s not yet clear what it will cover or what form it will take. USPTO’s recent actions in other areas will understandably lead to concerns that the USPTO is going to try to also use §101 to make it more difficult to obtain robust and reliable patent rights. However, the USPTO has an opportunity to use new guidance for §101 to show that its actions match its rhetoric regarding AI.
Currently, MPEP 2106.04(a)(1) provides a single example to examiners regarding how “a method of training a neural network” does not recite an abstract idea. Most examiners are not aware of this example. Those who become aware of it tend to treat it as a very narrow example or an aberration. This explains the high rate of §101 rejections for AI-related applications. Therefore, like the USPTO did with the 2019 PEG, the USPTO should issue new guidance that focuses on helping examiners avoid wrongly making §101 rejections for claims covering AI-related inventions.
Last week, the USPTO released such guidance. The guidance includes 3 new examples for AI-related inventions, including specific claims that are eligible and ineligible.
Clause 8 Podcast Show Notes
Clause 8 favorites - former USPTO Director Andrei Iancu and HTIA’s David Jones - return for the first ever Clause 8 debate!
They debate Section 101, find common ground, and discuss possible paths forward for improving the state of patent eligibility in America.
Selected Topics
Impact of Federal Circuit’s State Street decision: "golden age of business method patents”
Supreme Court’s Section 101 decisions: Bilski, Mayo, Myriad, and Alice
Iancu’s role & thoughts about Ariosa v. Sequenom
Why Jones was concerned after Alice and what changed his mind
Federal Circuit’s handling of Section 101 after Alice
Agreement regarding the USPTO’s 2019 Revised Patent Eligibility Guidance
Whether the Patent Eligibility Restoration Act (PERA) is a step toward a successful compromise in Congress
Possible adoption of EPO’s approach to patent eligibility
Notable, Quotable
"Patents are not just any other area of law. Patents are legal instruments, of course, but they're also commercial instruments." - Iancu
"What I think we disagree on is you don't think that the sky is falling when it comes to 101 . . . as is in the United States now, I do think the sky is falling." -Iancu
"Let's make the law clearer. Clearer law is always better." -Jones
Disclaimer: This podcast is provided for general informational purposes only and is intended as a general overview. The podcast does not constitute legal advice nor solicitation to provide legal services. It is not meant to convey a legal position, nor is it intended to convey specific legal advice. The opinions expressed are solely my own and those of any guests and do not express the views or opinions of any organization with which I or the guests are affiliated. In some jurisdictions, the contents of this podcasts may be considered Attorney Advertising.
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