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Alice Step 2 Approach for AI Inventions at the USPTO

17 / 6 / 2024

The AI revolution introduces new challenges for patent eligibility that current U.S. Court of Appeals for the Federal Circuit case law and USPTO policy are ill-equipped to handle. Alice Step 2, a widely misunderstood doctrine, risks becoming more confusing with AI inventions, as case law and examiner practices overemphasize the conventionality of computers in claims.

This scenario creates two problems for AI patent eligibility. Groundbreaking AI inventions often use generic computers and deserve patent protection, yet may be unjustly denied.


Conversely, abstract ideas can be dressed up with specialized machine learning accelerators to wrongly appear eligible, despite being ineligible.

As a quick reminder, deciding patent eligibility under the Supreme Court’s 2014 Alice Corp. v. CLS Bank International involves two steps. Alice Step 1 checks if a claimed invention is directed to an ineligible concept, like an abstract idea. If it is, Alice Step 2 looks for an «inventive concept» to ensure the claim isn’t just a way to monopolize the abstract idea.

Recently, Alice Step 2 at the USPTO has devolved into merely checking for the use of a generic or conventional computer. This is a flawed test, as it’s over-inclusive and often a foregone conclusion for computer-related inventions. Consequently, AI-related claims failing Alice Step 1 rarely get a fair second chance at Step 2.

Over three years without the PTAB finding a claim that satisfies Alice Step 2 highlights this issue. This shift towards a predetermined Alice Step 2 seemingly responds to the burdens imposed by the Berkheimer Memo, which required extensive fact-finding for examiners.

As a matter of fact, the USPTO is revising its eligibility guidance for AI inventions. It should clarify that claims should be found ineligible under Alice Step 2 not just for reciting generic or conventional computers, but for including only features inherent to monopolizing an abstract idea. Restoring Alice Step 2 is vital to ensure sufficient protection for significant AI inventions.


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