Navigating U.S. Patent Eligibility for AI Inventions

This analysis from Pine IP Firm examines the examination landscape for patent subject matter eligibility under 35 U.S.C. § 101 in the United States, specifically focusing on how to successfully navigate these challenges for Artificial Intelligence (AI) inventions.

1. The Rise of AI and the U.S. Patent System's Response

The Pervasive Impact of AI: AI technology is rapidly expanding across all industrial sectors, accelerating the pace and scope of innovation. From healthcare and semiconductors to intelligent manufacturing and robotics, the fusion of AI with existing technologies has led to a surge in AI-related patent applications. Recognizing this trend, the U.S. government has issued major AI policies, including the late-2023 Executive Order (E.O. 14110) and subsequent OMB guidance (M-24-10), emphasizing the principle of "Responsible AI" to foster its benefits while mitigating potential risks.

The Significance of the USPTO AI Strategy (January 2025): In this evolving environment, the U.S. Patent and Trademark Office (USPTO) released its "USPTO AI Strategy" in January 2025. This document signals a clear commitment:

• The USPTO will systematically analyze AI's impact on all facets of the IP ecosystem, from patent prosecution to public data utilization.
• It affirms the agency's intent to strengthen IP protection policies for AI innovations.
• It outlines a long-term plan to adopt AI tools internally to enhance the efficiency and quality of patent and trademark examination.

For applicants and attorneys, this is a critical signal. It indicates the USPTO is investing significantly in policy, technology, and talent for AI and is actively working to adapt the IP system to encourage AI-driven innovation.

2. The Core Challenge: § 101 and AI Inventions

The primary hurdle for AI-related patent applications in the U.S. remains § 101 Subject Matter Eligibility. Despite recent USPTO guidance updates throughout 2024 and 2025, several common rejection patterns persist

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• Classification as an Abstract Idea: Examiners frequently categorize AI inventions as ineligible "mental processes" or as simple calculations that can be performed with "pencil and paper." Even complex neural networks like CNNs or Transformers are sometimes dismissed as abstract "mathematical concepts" due to their foundation in multiplication and addition operations.
• Lack of "Significantly More": Under Step 2A (Prong Two) or Step 2B of the eligibility analysis, applications are often rejected for lacking "significantly more" than the abstract idea. Examiners may assert that the claims recite "no meaningful technical features beyond a memory and a processor" and merely append "performed by a processor" to an idea, failing to distinguish it from a generic computer.
• Inherent Bias Against AI: A textbook attitude of, "Couldn't a human perform this calculation?" often pervades the examination process. This mindset overlooks the crucial aspects of scale, speed, and complexity that make AI operations impossible for humans to perform manually, leading to an oversimplified classification of the invention as an abstract idea.

3. Leveraging the USPTO AI Strategy to Overcome § 101 Rejections

The new AI Strategy provides valuable insights for increasing the allowance rate of AI patents. Of the five "Focus Areas" in the strategy, the following are most relevant to § 101 challenges:

• Advancing IP Policies: The USPTO has committed to developing comprehensive policies for emerging issues like Generative AI and AI-assisted inventions. It explicitly mentions its continued study of subject matter eligibility, obviousness, and AI inventorship. This suggests that future examination guidelines may move beyond the rigid "mental process" framework to more fully consider the tangible implementation and technical effects of AI.
• Technical Specificity Beyond the "Processor": The AI Strategy implicitly signals that technical specificity is paramount. By detailing hardware-level improvements—such as the massive computational load, real-time processing requirements, memory management techniques, or the use of specialized hardware like GPUs/TPUs—in the specification and claims, applicants can strengthen their case under both § 101 and § 103 (obviousness). For instance, limiting a claim to a "processor configured for specific AI acceleration" (or an ASIC/FPGA) can be instrumental in overcoming an abstract idea rejection.

4. Key Strategies for Responding to Step 2A & 2B Rejections

Synthesizing the USPTO's AI Strategy, the 2019 Revised 101 Guidance, and relevant case law, the following strategies are essential for steering AI inventions clear of § 101 rejections:

1. Emphasize the "Technical Improvement": Clearly articulate how the invention improves the functioning of the computer itself or another technology. Examples include "improving computational efficiency via a parallel processing architecture" or "enhancing real-time prediction accuracy through integration with specific sensors." Back these claims with implementation examples, experimental data, and details on hardware resource utilization.
2. Highlight Inhuman Scale and Complexity: Frame the invention not as a simple formula, but as a large-scale process that is impossible for the human mind to perform. Describing "a CNN architecture with over one million parameters" or "a system that analyzes tens of millions of events per second" clearly places the invention beyond the scope of a "mental process."
3. Detail the Implementation Beyond a "Generic Computer": To demonstrate "significantly more" than an abstract idea, move beyond the phrase "performed by a processor." Incorporate specific system configurations into the claims, such as AI-accelerating hardware, data pre-processing/post-processing modules, or memory management techniques (caching, buffering).
4. Insist on a Holistic Evaluation of the Claims: If an examiner improperly dissects a claim, dismissing some elements as abstract before evaluating the remainder, rebut this by citing Federal Circuit precedent that mandates claims be considered as an integrated whole.
5. Provide a Practical, Problem-Solving Scenario: Presenting a concrete application, such as "improving medical image diagnosis accuracy by X%," strengthens the argument that the invention is a practical application of an idea (Prong Two), not merely the idea itself.

5. Conclusion and Outlook

The USPTO views AI as a core engine of future innovation, and its 2025 AI Strategy signals a comprehensive effort to build a more sophisticated and robust IP protection framework. However, the reality is that examiners still rely on traditional—and often outdated—rejections based on "pencil and paper" or "mental process" logic.

To counter this, applicants must adopt a multi-faceted approach: emphasize specific technical implementations, prove the practical value and problem-solving effects of the AI, and integrate arguments based on the latest USPTO guidance and case law.

As USPTO examiners receive more training in AI, a more flexible and informed examination process is expected to emerge. The agency has signaled it will consider "enabling the solving of problems that humans could not," and it is incumbent upon applicants and their counsel to provide the robust arguments and evidence to support this.

At Pine IP Firm, we are committed to meticulously analyzing the USPTO AI Strategy and the evolving § 101 landscape to craft application strategies that maximize our clients' technological advantages. We will continue to help secure the vital patent rights that empower AI innovations to contribute meaningfully to business and society. Thank you.