USPTO Extends Comment Deadline on Patent Eligible Subject Matter Guidance for AI Inventions
The USPTO has extended the public comment deadline in order to afford all stakeholders an opportunity to weigh in on the subject matter eligibility of AI inventions.
The U.S. Patent and Trademark Office ("USPTO") announced on September 17, 2024, that the deadline to provide written comments regarding the "2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence" ("SME guidance" or "guidance") published on July 17, 2024, is being extended to October 16, 2024. Recognizing that all stakeholders should be afforded an opportunity to weigh in on this critical topic, the USPTO has elected to extend the original deadline of September 16, 2024.
As reported in our Commentary, the SME guidance is part of an ongoing effort by the USPTO to address emerging legal issues at the intersection of intellectual property and critical technologies, particularly artificial intelligence ("AI"). To that end, the SME guidance aims to clarify how the current SME criteria, which was established under the Alice / Mayo paradigm, apply to AI technologies. This goal is reflected in the two flowcharts outlining the SME analysis framework to be conducted by USPTO personnel and three new AI-specific SME examples. Notably, the guidance emphasizes the criticality of details on how AI provides "a technological solution to a technological problem" as opposed to "merely claiming the idea of a solution or outcome." 89 Fed. Reg. 58128, 58136-37. Furthermore, the SME guidance stipulated that the use of AI in developing an invention has no bearing on its SME, thereby imposing the same SME considerations to AI-assisted inventions as other inventions.
According to the USPTO, the written comment period will only be extended once. As such, practitioners and other interested parties are advised to submit written comments no later than the new October 16, 2024 deadline.
