U.S. Patent and Trademark Office (USPTO) Memo Clarifies Assessment of Patent Eligibility Under 35 U.S.C. Section 101
The United States Patent and Trademark Office (USPTO) has issued a memorandum o advance notice revising the MPEP to incorporate guidance from the Appeals Review Panel’s precedential decision in Ex Parte Desjardins (Appeal No. 2024-000567). This decision clarifies how examiners should assess patent eligibility under 35 U.S.C. § 101, especially for claims related to machine learning and artificial intelligence.
The memorandum emphasizes that eligibility determinations should focus on whether claims are directed to technological improvements, such as enhancements in computer functionality, rather than abstract ideas. The Desjardins decision specifically recognized improvements such as reduced storage, streamlined system complexity, and the preservation of performance attributes in continual learning systems as technological advancements. The decision instructs examiners to evaluate claims as a whole, considering whether the specification describes improvements that are reflected in the claims—even if not explicitly stated.
Key updates to the MPEP include:
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Adding examples of eligible claims that improve technology, such as methods for training machine learning models that protect prior knowledge while learning new tasks.
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Revising guidance to ensure examiners look for specific technological solutions to technical problems, rather than generic instructions or abstract ideas.
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Stressing the importance of evaluating claims in the context of their disclosed improvements, and not dismissing meaningful technical limitations as generic components.
These changes are effective immediately and supersede previous MPEP guidance. The USPTO will formally update the MPEP to reflect these revisions in due course.
This is a direct link to the notice: https://www.uspto.gov/sites/default/files/documents/memo-desjardins.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=
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