Judicial exceptions are not hurting AI
CRS 1-3-2024, Congressional Research Service (CRS). CRS serves as nonpartisan shared staff to congressional committees and Members of Congress. It operates solely at the behest of and under the direction of Congress. Information in a CRS Report should not be relied upon for purposes other than public understanding of information that has been provided by CRS to Members of Congress in connection with CRS’s institutional role https://crsreports.congress.gov/product/pdf/IF/IF12563, " Patent-Eligible Subject Matter Reform: An Overview" (ermo/sms, Acc:6-28-2024)
Innovation in emerging technology areas may face unique challenges because of the restricted scope of patent-eligible subject matter, as well as the variability in how such standards are interpreted by patent examiners and the courts. For example, one area of policy concern relates to patent-eligible subject matter standards as they apply to innovations in AI. Though the number of patent applications pertaining to AI has increased over the past 10 years, some stakeholders have reported concern that AI inventions are at risk of patent ineligibility under the current framework because “they may be characterized as methods of organizing human activity, mental processes, or mathematical concepts.”
Given the growing importance of AI technologies, USPTO analyzed patent examination data to study the effect of the Alice/Mayo framework on AI. USPTO’s study evaluated whether the Supreme Court’s 2014 decision in Alice, which rejected a patent claim on a method of mitigating settlement risk in financial transactions using a computer, impacted the agency’s allowance rates for patent applications containing AI. USPTO reported suggestive evidence that Alice impacted AI technologies differentially.
Post-Alice Changes to Patent Examination Processes by USPTO
USPTO responded to concerns about the patentability of AI-related and other inventions in 2019 by issuing new guidance to patent examiners to clarify how to apply the Alice/Mayo framework. USPTO later incorporated this guidance (the “2019 Guidance”) into the Manual of Patent Examining Procedure, which guides patent examiners in their review of patent applications. The 2019 Guidance was generally perceived as lowering Section 101 barriers to patentability, especially for computer-related inventions. The 2019 Guidance appears to have led to an increase in the allowance rate for patent applications containing AI.
Although the 2019 Guidance changes how USPTO examiners review new patent applications, it is not binding on the courts when issued patents are challenged in litigation. The 2019 Guidance itself states that it lacks “the force and effect of law.” Following its June 2022 report to Congress on patent eligibility, USPTO issued a request for comments on its 2019 Guidance and other patent subject matter eligibility issues. The comment period closed in October 2022. The USPTO Director has explained that the office is “evaluating the comments to determine next steps.”