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The Intellectual Property StrategistFeaturesArtificial IntelligenceIntellectual PropertyPatent Licensing and TransactionsPatent Litigation

Artificial Intelligence and Subject Matter Eligibility In U.S. Patent Office Appeals

By James W. Soong
August 01, 2021

Artificial intelligence is changing industry and society, and metrics at the U.S. Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See "Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents," Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.

This article explores USPTO handling of Alice issues involving artificial intelligence and machine learning through a sampling of recent Patent Trial and Appeal Board (PTAB) decisions. See Alice Corp. v. CLS Int'l, 134 S. Ct. 2347 (2014). Some decisions dutifully applied USPTO guidelines on subject matter eligibility, including Example 39 thereof, to resolve appeal issues brought to the PTAB. In one case, the PTAB sua sponte offered eligibility guidance even with no Alice appeal issue before it. These decisions inform strategies to optimize patent drafting and prosecution for artificial intelligence and machine learning related inventions.

"Generic Machine Learning Algorithm"

In Ex parte Hussain, Appeal No. 2020-005406 (PTAB Feb. 18, 2021), the PTAB considered the subject matter eligibility of claims reciting a "machine learning algorithm" in relation to mitigation of risk of consumer default on an online transaction. Representative claim 1 recited as follows:

  1. A computer-implemented method, comprising: under the control of one or more computer systems that execute instructions,providing executable instructions to a client computing device associated with a user that, as a result of being executed by the client computing device, causes the client computing device to:

collect client data that includes:

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