Comment Period for USPTO’s AI Eligibility Guidance Extended by One Month

The U.S. Patent and Trademark Office (USPTO) today announced that it will extend the comment period for its “2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence” by one month.

The Notice, published in the Federal Register on July 17, 2024, originally included a deadline for comments of September 16, 2024, which is now extended to October 16, 2024. “The extension ensures that all stakeholders have a sufficient opportunity to submit comments on the guidance update,” said the USPTO announcement.

USPTO Director Kathi Vidal announced the updated guidance in July, explaining that the Office wants people to use AI, but that “we want to make sure we strike the right balance so that AI is used for innovation, but isn’t used to lock up innovation.”

According to the July update, stakeholder feedback has indicated “that when considering the subject matter eligibility of AI inventions, there are certain areas of particular concern: (1) the evaluation of whether a claim recites an abstract idea in Step 2A, Prong One; and (2) the evaluation of the improvements consideration in Step 2A, Prong Two.”

The guidance thus includes several examples of AI claims that do and do not recite abstract ideas to assist examiners in this evaluation. It first provides several “non-limiting hypothetical examples of claims that do not recite an abstract idea” and then goes on to provide examples from recent U.S. Court of Appeals for the Federal Circuit (CAFC) cases of representative claims.

When asked by IPWatchdog Founder and CEO in July what kinds of comments the Office would be most likely to consider, since the guidance had an essentially immediate effective date, she encouraged commenters to be concrete. “We have a lot of certainty behind it,” Vidal said. “That said…there may be something in there people want to comment on… The best feedback is the most concrete feedback. Examiners will also have an opportunity to give feedback – they’re going to get training and if they think there’s something that can be better said, they can give us feedback.”

Vidal also said she is open to potential subject matter eligibility legislation being passed in the sense that “anything that brings more clarity and certainty when it comes to eligibility would be positive.” The Patent Eligibility Restoration Act (PERA) is one of three bills scheduled to be moved forward in the Senate Judiciary Committee this week.

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