U.S. Patent and Trademark Office (USPTO) : Designates as Precedential an Appeals Review Panel Decision Addressing AI Under 35 U.S.C. Section 101
In the decision Ex party Desjardins, Appeal No. 2024-000567 (ARP Sept. 26, 2025), the Appeals Review Panel (ARP) of the U.S. Patent and Trademark Office (USPTO) reversed the Board’s new ground of rejection under § 101, determining that the claims at issue reflect improvements in artificial intelligence (AI) technology. The ARP decision explains that the claims are patent-eligible, pointing to the Federal Circuit’s Enfish decision, which observes that many advancements in computer technology, “by their very nature, may not be defined by particular physical features but rather by logical structures and processes.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). The ARP decision further explains that the claims at issue stand rejected under § 103, demonstrating that §§ 102, 103, and 112 are the traditional and appropriate tools to limit patent protection to its proper scope.
In remarks delivered at the AIPLA Annual Meeting on Friday, October 31, Director John A. Squires promised that additional guidance was forthcoming on the issue of patent eligibility. The precedential designation of Ex parte Desjardins fulfills that promise under the “three pillars of eligibility”—namely, 35 U.S.C § 100(b), Enfish, and “Something More, Something Morse”—denoted in his remarks.
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