For years, innovators in the Artificial Intelligence space have faced a frustrating paradox: creating groundbreaking technology, only to have their patent applications rejected on the grounds that their inventions are too “abstract.” At our firm, we’ve seen this firsthand. We’ve championed brilliant AI inventions, arguing that they are tangible, transformative, and deserving of protection, only to be met with a § 101 rejection from an examiner.

It often felt like we were speaking a different language. We’d explain the technical improvements—how an AI model could learn more efficiently, reduce system complexity, or solve a specific computational problem—and in return, we’d hear that it was just a “mathematical concept” or a “generic” process.

But a recent decision from the United States Patent and Trademark Office (USPTO) might just be the breakthrough we’ve all been waiting for.

The Problem: When Innovation Meets Abstraction

The core of the issue has been 35 U.S.C. § 101, which defines patent-eligible subject matter. For a long time, patent examiners have interpreted this section, guided by court precedents like Alice Corp. v. CLS Bank Int’l, to reject many software and AI-related inventions as “abstract ideas.”

The argument usually goes like this:

  1. The examiner identifies a mathematical calculation or algorithm within the invention.
  2. They label this the “abstract idea.”
  3. They then conclude that the rest of the claim elements are just “generic computer components” and don’t add an “inventive concept.”

This approach has been a major roadblock, especially for AI, where the innovation is often in the logic, the process, and the improved functionality of the system itself. It has left many entrepreneurs and companies wondering if their most valuable AI innovations could ever be properly protected.

A Beacon of Hope: The Ex parte Desjardins Rehearing Decision

This is where a recent decision by the USPTO’s Appeals Review Panel (ARP) in Ex parte Desjardins becomes so significant. The case involved an AI invention for training a machine learning model to learn new tasks without “catastrophic forgetting” of old ones—a well-known technical challenge in the AI field.

Initially, a Patent Trial and Appeal Board (PTAB) panel rejected the claims under § 101, using the same “abstract idea” reasoning we’ve seen countless times. However, on rehearing, the ARP, led by JOHN A. SQUIRES, the newly appointed Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, vacated the rejection.

The ARP’s reasoning is a game-changer for AI patents. They acknowledged that while the invention involved a mathematical concept (an “abstract idea”), the claims as a whole were directed to a practical application and a technical improvement.

The ARP pointed directly to the invention’s ability to “effectively learn new tasks in succession whilst protecting knowledge about previous tasks” and its benefits of using “less of their storage capacity” and having “reduced system complexity.”

In a powerful statement, the decision noted:

“Categorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology. Yet, under the panel’s reasoning, many AI innovations are potentially unpatentable… Examiners and panels should not evaluate claims at such a high level of generality.”

This is the validation the AI community has been waiting for. The USPTO’s own leadership is signaling that examiners need to look beyond a surface-level “abstract idea” analysis and recognize genuine technical improvements in AI.

What This Means for Your AI Innovations

This decision is more than just a win for one applicant; it’s a strategic shift. It reinforces that the proper tools to examine an invention’s patentability are often found in novelty (§ 102), non-obviousness (§ 103), and written description (§ 112), rather than an overly broad application of § 101.

For innovators and entrepreneurs, this means:

  • Stronger Arguments: We now have a powerful precedent from the USPTO’s highest levels to counter improper § 101 rejections.
  • Focus on Technical Improvement: When drafting patent applications, it’s more crucial than ever to clearly articulate the specific technical problem your AI solves and the tangible improvements it provides over existing systems.
  • Renewed Optimism: There is renewed hope that the USPTO is aligning its examination practices with the reality of modern technological innovation.

We’ve been in the trenches, fighting for our clients’ AI patents. This decision gives us—and you—a much sharper sword. It affirms what we’ve argued all along: a well-crafted AI invention that provides a concrete technical solution is not an abstract idea; it is the very essence of innovation.

The tide is turning. Are you ready to finally secure the patents your AI inventions deserve?

If you are developing groundbreaking AI then Contact us today to discuss your AI patent strategy.

Schedule time at meetwithrandi.com to chat.

Let’s secure the future of AI innovation together! 🚀

#AI #Patents #Innovation #Entrepreneurship

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