Under the direction of President Joe Biden’s executive order on artificial intelligence, issued in July, the U.S. Patent and Trademark Office (USPTO) recently updated its guidance on subject matter eligibility analysis. This update aims to enhance clarity, consistency, and address innovation in AI and other critical emerging technologies.
According to Sean Lee at Baker Botts, a vital component of the updated guidance is the emphasis on Prong 2 of the eligibility analysis, which focuses on whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. Practitioners seeking to overcome rejections should consider structuring their arguments around strong Prong 2 analyses.
The complete details and implications of this update are discussed in Sean Lee’s detailed analysis, available through Law360.