By Donald Zuhn –

In an email USPTO Alert that was distributed this afternoon, the U.S. Patent and Trademark Office announced that its offices will be closed on December 24 and December 26.  Because December 25 is listed as one of eleven federal holidays on the U.S. Office of Personal Management web site (as it is annually), the USPTO will also be closed on Christmas Day.  According to the USPTO announcement, the closures on Wednesday, December 24 and Friday, December 26 are the result of “the official closing of the Federal Government offices, including the United States Patent and Trademark Office (USPTO)” on those days.  The Office also noted that “the USPTO will consider actions or fees due on Wednesday, December 24, through Friday, December 26, to be timely if taken or paid no later than 11:59 p.m. ET on Monday, December 29, which is the next business day on which the USPTO is scheduled to be open.”

According to the announcement, notices regarding the additional days on which the USPTO will be closed will be published in the Official Gazette and on the Office’s Patent Related Notices webpage “in due course” (these notices were not yet available at the time this article was posted).

While not intended to be a comprehensive list of other patent office closures, Patent Docs has become aware of the following patent office closures during the upcoming holidays:

• The European Patent Office (EPO) will be closed from Wednesday, December 24, 2025 through Thursday, January 1, 2026 (see “Office holidays“)

• The Instituto Nacional da Propriedade Industrial (INPI; Brazilian Patent and Trademark Office) will be closed from 1:00 pm on Wednesday, December 24, 2025 through December 26, 2025 and then from 1:00 pm on Wednesday, December 31, 2025 through January 2, 2026.

• The Instituto Mexicano de la Propiedad Industrial (IMPI; Mexican Patent and Trademark Office) closed its offices on Monday, December 22, 2025 and will reopen on Wednesday, January 7, 2026.

Patent Docs readers aware of other patent office closures are invited to submit comments with the dates of those other office closures.

By Mike Borella –

One might be forgiven for assuming, based on a cursory reading of the Constitution or perhaps a fleeting bout of logic, that the U.S. patent system exists to promote the progress of science and useful arts. Historically, this meant incentivizing inventors to create tools that reduced human drudgery, increased accuracy, and generally made life less miserable for the species.

However, under the current jurisprudence of the Federal Circuit, patent law lives in a fascinating dystopia – the more an invention is described in terms of its utility to human beings (e.g., saving time, organizing data, reducing errors), the more likely it is to be summarily executed under 35 U.S.C. § 101. Welcome to the usefulness paradox, where the very benefits of an invention are used as evidence against its eligibility.

To understand the absurdity of the current moment, we first look at what the Patent Office used to consider worthy of protection. Let us review a few inventions that, under today’s Section 101 analysis, would likely be categorized as abstract “fundamental practices” or “methods of organizing human activity.”

• Eli Whitney’s Cotton Gin (1794). The invention was a machine that separates cotton fibers from their seeds. Today, a § 101 contention would write itself: “The act of separating desirable objects from undesirable objects is an abstract practice performed by humans since the dawn of agriculture. The rollers and brushes are merely generic mechanical components performing their expected functions.”
• Alexander Graham Bell’s Telephone (1876). The claim covers “the method of, and apparatus for, transmitting vocal or other sounds telegraphically.” Under the modern interpretation of § 101, this invention could be viewed as the abstract concept of human communication over a distance with the electric wire just a generic conduit.
• Thomas Edison’s Light Bulb (1880). Another loser in view of the current law that is drawn to the abstract idea of “generating incandescence by heating a resistive wire through conduction of electricity.” Further, the additional elements of metallic wires, glass, and a closed chamber, were in routine use at the time of the invention.

These inventions defined the modern world. They were patentable because they provided a solution to a physical problem formerly performed by humans (e.g., separating seeds from cotton, sending messages from place to place, and providing illumination in dark environments, respectively). They involved some degree of making a human task more efficient and useful through machinery. In each case, the machinery performed the task differently than humans had previously.

This notion of new and useful machines being patentable was prevalent in the Industrial Age, but has not survived unscathed in today’s Information Age. The Federal Circuit appears to view computer-implemented methods as being fundamentally different from those carried out by other types of non-computer automation. Indeed, a thread running through the last 11 years of § 101 jurisprudence is that if a human could perform a task (no matter how slowly or poorly), a computer doing it differently and better is likely ineligible. The fact that the computer can, in practice, achieve a useful result that a human could not appears to be irrelevant. Let’s consider some examples.

In Yu v. Apple Inc., the invention was a digital camera system that used two separate image sensors and lenses to create a single, higher-quality image. This is a classic hardware-software hybrid invention designed to overcome the physical limitations of single camera lenses. The Federal Circuit found it ineligible. Why? Because photographers have been taking pictures for a long time. The Court reasoned, “[t]he claim is directed to the abstract idea of taking two pictures . . . and using one picture to enhance the other in some way . . . the idea and practice of using multiple pictures to enhance each other has been known by photographers for over a century.” By this logic, the fact that a human could manually overlay two film negatives in a darkroom renders a real-time, digital signal processing invention abstract. The court reduced a complex technical configuration of sensors and lenses to the fundamental human activity of taking photos.

In IBM Corp. v. Zillow Group, Inc., the patent involved a method for displaying search results in a way that contextually adjusted based on user input – an improvement in how humans interact with database systems. The Federal Circuit affirmed invalidity, stating, “[t]he claims . . . do nothing more than improve a user’s experience while using a computer application [and fail to] do anything more than identify, analyze, and present certain data to a user, which is not an improvement specific to computing.”[1] The Court is effectively saying that making a computer easier for a human to use is not a technical improvement to the computer. In doing so it separates user experience from technology, as if the entire purpose of a computer isn’t to be used by and provide utility to humans.

The inanity escalates with Recentive Analytics Inc. v. Fox Corp. The invention was a machine learning method for optimizing event schedules (like TV broadcasts) by analyzing vast arrays of constraints. This replaces a logistical nightmare with an optimized, AI-driven schedule. The Federal Circuit found it ineligible because optimizing a schedule is a human concept, and using AI to do it (differently) is just generic. Notably, “the use of machine learning to achieve this result is merely the application of a generic computer tool.” This holding suggests that if AI is used to solve a problem that a human understands (like scheduling), the AI itself is just a generic tool for an abstract idea. The Court punished the invention for being useful in a domain that humans care about.

The tragic irony of this jurisprudence is that it incentivizes patent practitioners to draft applications that obfuscate the actual benefit of the invention. If you write a patent application today that states that the invention helps the user take better photos, you have handed the examiner a loaded gun. They can cite Yu and say you are merely automating the abstract idea of picture enhancement. If you write, “this invention makes the interface more intuitive,” they can cite IBM and contend that the invention is focused on user experience rather than technical functionality. We have reached a point where the usefulness requirement of § 101 is being used to negate eligibility.

The downside to the public good is palpable. We are effectively telling innovators in consumer electronics, user interface design, and applied AI that their work is not technology, but merely convenience. This outcome ignores the fact that in an information economy, the ability to process, visualize, and interact with data is the technology. If we continue to interpret abstract ideas as anything that a human could theoretically do regardless of time, error rate, or physical capability we are not protecting the public from monopolization of fundamental truths. We are preventing the public from accessing the specific applications that make those truths usable.

---

[1] Even a casual glance at the detailed claims of the patent in question calls this statement into question.

By Kevin E. Noonan –

Over several years and two administrations (see “FTC Announces Efforts to Police Pharmaceutical Companies’ Patent Behavior“; “FTC Warns Pharma Companies It Means Business with Its Orange Book Listing Policy“; “Federal Trade Commission Continues Efforts to Delist Drug Device Administration Patents in Orange Book“), the Federal Trade Commission has maintained a campaign against listing in the FDA Orange Book patents claiming devices for administering approved drugs (and frequently not reciting any particular drug in the patent claims therein).  On Wednesday, the Commission announced that one of its targets, Teva Pharmaceuticals, had agreed to remove over 200 such “improper patent listings” from the Orange Book, in response to these FTC efforts.

Teva was only one such FTC target, there having been ten pharmaceutical companies and 100 patents identified by FTC under former Chairwoman Lina Khan, which number expanded to 300 so-called “junk patents” by the end of her tenure.  This campaign against Teva was aided by a decision in the New Jersey District Court (Teva Pharms. Inc. v. Amneal Pharms. LLC (D.N.J. 2024)), affirmed by the Federal Circuit (Teva Branded Pharmaceutical Products R&D, Inc. v. Amneal Pharmaceuticals of New York, LLC (Fed. Cir. 2024)) holding that five device patents owned by Teva and asserted against Amneal Pharmaceuticals were improperly listed in the Orange Book (the FTC having filed an amicus brief relied upon by the District Court in coming to its decision).

The press release ascribed the current administration’s asserted policies to be part of its efforts to reduce drug prices, referencing an Executive Order on Lowering Drug Prices.  FTC Chairman Andrew N. Ferguson was quoted as saying that “[t]he Trump-Vance FTC is working hard to ensure that Americans have access to the affordable prescription drugs they need” (pursuing a policy started by the Biden Administration).  Further, in the press release (also echoing the sentiments of the Biden administration) the FTC stated that:

Improper patent listings can limit competition by preventing generic alternatives from entering the market.  This can keep drug prices artificially high and prevent patients from accessing lower-cost alternatives.  The removals of more than 200 improper listings will pave the way for greater competition for generic alternatives for more than 30 asthma, diabetes, and COPD drugs and epinephrine autoinjectors.

While reducing drug prices is a goal shared by policymakers on both sides of the aisle, it is difficult not to respond to assertions such as those in the FTC’s press release with “Not so fast, FTC.”  Because as appealing as declaring victory may be, it ignores the realities of the structure provided by the Hatch-Waxman Act that has greatly increased the availability of generic drugs since it was enacted in 1984.  Some of the reasons for these successes is that the Orange Book contained the patents a branded drug maker could assert in obtaining a thirty-month stay in FDA approval for a generic drug who had filed an ANDA (abbreviated new drug application).  In addition, because of that stay, infringement (by filing the ANDA) was constructive under the statute (35 U.S.C. § 271(e)(2)) so that money damages were not available for the branded drug maker (unless at the expiration of the 30 months the generic company launched “at risk,” which also provided the branded drugmaker with the possibility of obtaining treble damages for willful infringement under 35 U.S.C. § 284)).

Having delisted any patents now determined by the FTC to be improperly listed, none of these protections (for either party) exist regarding those patents.  After all, they have not evaporated or been deemed unenforceable, and the capacity for branded drugmakers to assert them still exists under 35 U.S.C. § 271(a) should the generic drugmaker enter the market after its ANDA was approved. It remains an open question, but despite FTC’s triumphant rhetoric that delisting has improved the likelihood of generic entry it may on the contrary inhibit it; although having no Orange Book listed-patents precludes a branded drug maker from asserting infringement under § 271(e)(2), it is unlikely that they would not bring suit under §271(a).  With the attendant risks of enhanced liability under § 284, it seems equally likely that potential generic drugmakers, even having obtained FDA approval for their generic version of the “more than 30 asthma, diabetes, and COPD drugs and epinephrine autoinjectors” cited in the FTC press release, would prudently pause to consider their best strategic path to bringing their product to market.  And the possibility of reaching a licensing agreement with the branded drugmaker might be less appealing in view of the protracted (and ultimately somewhat successful; see FTC v. Actavis) efforts by the FTC over a decade ago to thwart certain of these types of licenses (see “The FTC’s Thinking Does Not Make It So Regarding Reverse Payment Agreements“; “Federal Trade Commission Issues Report on Reverse Settlement Agreements in FY2010“; “FTC Releases Another Report on Reverse Payment Settlement Agreements in ANDA Litigation“; “The FTC Is at It Again“) (albeit those that delayed rather than facilitated generic market entry).

But the possibility of FTC scrutiny even of efforts to bring generic drugs to market being an uncertain eventuality, it is at least possible that the unadorned benefit of the FTC’s success in getting some (but by no means all, at least not yet) of the threatened listed patents and companies having listed them may not be quite the policy coup that is being touted by the administration this week.  Time will tell.

By Mike Borella –

Late last week, the U.S. Patent and Trademark Office (USPTO) published three memos addressing its latest policies regarding subject matter eligibility.  These included “Subject Matter Eligibility Declarations” from Director Squires to the patent examining corps, “Best Practices for Submission of Rule 132 Subject Matter Eligibility Declarations (SMEDs)” from Director Squires to applicants and practitioners, and “Advance notice of change to the MPEP in light of Ex Parte Desjardins” from Deputy Commissioner Charles Kim.

The memos are part of Squires’ push to move the subject matter eligibility analysis under § 101 away from subjective legal notions toward a more rigorous, evidence-based framework.  Nonetheless, the underlying law surrounding eligibility remains structurally flawed due to its reliance on amorphous judicial exceptions that allow certain types of technical advances to be ignored.  Thus, these administrative remedies may ultimately fall short of resolving the systemic unpredictability that plagues § 101.

1.  Subject Matter Eligibility Declarations

The first memo is intended to “raise examiner awareness about the existing option for applicants to submit a declaration under 37 CFR 1.132, an underutilized path to proffer evidence to establish subject matter eligibility of the claimed invention.” Indeed, these declarations have been used by applicants since Alice v. CLS Bank came down in 2014, but have been a largely hit or miss affair. Given the amount of time and effort needed to research the facts behind an invention and craft a compelling narrative regarding its contribution, many applicants have chosen to forgo this option.

The memo sets the stage by reiterating rules for evidentiary declarations as set forth in M.P.E.P. § 716:

Any person who has knowledge of the facts being asserted in the declaration may sign the declaration (e.g., an inventor, an inventor’s co-worker, an independent expert, or others).  No special qualification other than knowledge of the facts is required . . . . The declaration must be timely filed to be entered and entitled to consideration.  In addition, the declaration must comply with other formalities.  Applicants are not required to submit an evidentiary declaration in an application, and applicants cannot be penalized for not submitting a declaration.

Importantly, “there must be a nexus between the invention as claimed and the evidence provided in the declaration.” In other words, the improvement provided by the invention and expounded upon in the declaration should at least be reflected in the claim language.  While a declaration may be used to supplement the disclosure in a specification by describing how it would be understood by a person of skill in the art as of the application’s filing date, it cannot be used to introduce new matter to the specification.

When the specification does not explicitly set forth the improvement but such an improvement would have been apparent, the declaration:

[M]ay provide facts that describe the state of the art at the time of filing, provide objective evidence as to how the invention improved upon the state of the art, or provide a factual basis for determining that one of ordinary skill in the art would have concluded that the invention improved the underlying technology.

Nonetheless, a declaration can only provide the factual basis that would support an outcome of eligibility, and any legal conclusions can be ignored.

Regarding an examiner’s consideration of the evidence presented, the memo states:

The examiner must carefully consider all of the applicant’s arguments and the evidence rebutting the subject matter eligibility rejection when evaluating the applicant’s response.  The evidence provided in the declaration must be taken into account whenever properly presented; however, such evidence alone would not necessarily control the eligibility determination because the examiner must weigh all relevant evidence of record and then determine whether the claims are eligible based on the preponderance of the evidence (i.e., more likely than not) standard.

Whether or not the examiner is persuaded by a declaration, the examiner must explain why they have withdrawn or maintained the § 101 rejection.

The memo ends with several examples, not of actual declarations but of how declarations might be used in practice.  This is where the memo falls short, as each example reiterates that a declaration must not improperly supplement the specification and must provide a nexus between the claimed invention and the proposed technical improvements.  But the exact nature of establishing technical improvements remains fact-intensive and specific to individual inventions.[1]  Thus, it is not clear exactly how an examiner is expected to go about the evaluation.

For patent applications written with rigorous support for the claimed invention being a specific technical improvement over the prior art (e.g., with statements of technical improvements and reminders of such improvements distributed throughout the text), it is unlikely that a subject matter eligibility declaration will move the needle.  However, specifications not written in this fashion, particularly older specifications, may benefit from this new initiative.

2.  Best Practices for Submission of Rule 132 Subject Matter Eligibility Declarations (SMEDs)

The second memo is perhaps the least interesting of the three.  Its main purpose is to remind applicants that subject matter eligibility declarations “should be submitted as separate documents and not combined with declarations or testimony addressing other issues, such as obviousness.” Notably, one is permitted to submit a combined declaration, but doing so is discouraged to “avoid the risk of intertwining issues of enablement, written description, novelty and nonobviousness with those of subject matter eligibility.”

3.  Advance notice of change to the M.P.E.P. in light of Ex Parte Desjardins

Finally, and perhaps most substantively, the M.P.E.P. is being updated to reflect Director Squires’ precedential ARP decision in Ex Parte Desjardins.  This memo includes several edits to § 2106 that effectively codify the reasoning behind the decision.  The memo begins by stating:

Examiners are expected to consider existing precedent like Enfish, as discussed in MPEP § 2106, in addition to these updates when assessing eligibility under 35 U.S.C § 101, particularly when evaluating claims related to machine learning or artificial intelligence.

Importantly, this reliance on Enfish should be not read to indicate that the reasoning of Desjardins is limited to machine learning inventions but is instead generally applicable.  For machine learning, however, Desjardins provides specific examples of how those types of inventions can be viewed as patent eligible.

Other key language added to various sections of the M.P.E.P. include:

The Appeals Review Panel (ARP) overall credited benefits including reduced storage, reduced system complexity and streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks as technological improvements that were disclosed in the patent application specification . . . . In Step 2A Prong Two, the ARP then determined that the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems.  Importantly, the ARP evaluated the claims as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the specification.  Accordingly, the claims as a whole integrated what would otherwise be a judicial exception instead into a practical application at Step 2A Prong Two, and therefore the claims were deemed to be outside any specific, enumerated judicial exception.

***

Indeed, enumerated improvements identified in the Desjardins specification included disclosures of the effective learning of new tasks in succession in connection with specifically protecting knowledge concerning previously accomplished tasks; allowing the system to reduce use of storage capacity; and the enablement of reduced complexity in the system.  Such improvements were tantamount to how the machine learning model itself would function in operation and therefore not subsumed in the identified mathematical calculation.

***

When evaluating a claim as a whole, examiners should not dismiss additional elements as mere “generic computer components” without considering whether such elements confer a technological improvement to a technical problem, especially as to improvements to computer components or the computer system.

Each of these passages is quotable grist for the mill of § 101 rebuttals.  In recent weeks, applicants have taken to quoting the Desjardins decision in such rebuttals.  While doing so still has merit, directly addressing the new language of the M.P.E.P. should subsume and replace it.

Still, it is important to re-emphasize that applications written to explain how the claimed invention is a specific technical improvement over the prior art in as many ways as reasonably possible will almost certainly fare better than those that are not.  But until Congress or the Supreme Court intervenes to fix the broken foundation of § 101, these administrative updates merely allow applicants to navigate the maze of eligibility with slightly better maps.  The ground remains as shaky as ever.

---

[1] For example, the memo states that performance results can be supplied if they were not included in the specification.

By Joshua Rich and Mike Borella –

On February 13, 2024, then-USPTO Director Vidal issued inventorship guidance for AI-assisted inventions;[1] on November 28, 2025, new USPTO Director Squires revoked and replaced it. But both the earlier guidance and current Revised Inventorship Guidance are based on previously decided Federal Circuit precedent. That is, the change in guidance is not based on a change in law, but rather a change of administrations. As a result, as Director Squires has emphasized on other fronts, examiners are being counseled to be more flexible and more pro-patent grant in approaching their interpretation of the same case law. That is, in sports parlance, the modification is really a “point of emphasis” – the rules haven’t changed, but officials are to focus differently on how they are to be enforced.

Both the earlier guidance and Revised Inventorship Guidance are based on 35 U.S.C. § 115 and the Federal Circuit’s decision in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), which establish that only natural persons (that is, humans) can be named inventors on patent applications or issued patents. AI systems therefore cannot be named as inventors. The question, as always, is who “conceived” of an invention, an issue that preceded the development of AI systems and continues to be a fact-intensive, challenging quandary today. In both the earlier and current guidance, examiners were directed to Burroughs Wellcome Co. v. Barr Labs., Inc., 40F.3d 1223 (Fed. Cir. 1994) for the test to answer that question.

Based on that legal background, the four major points of both guidance are the same. First, the USPTO generally presumes that the human inventors named on the application data sheet and oath and declaration are the true inventors of the invention claimed in a patent application. Second, no AI system (or other non-human person or thing) can be named as an inventor for a patent application or issued patent. Third, when multiple humans are involved in the inventive process, traditional inventorship principles (including the factors set forth in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998)) apply. Fourth, the same analysis applies for utility patents, plant patents, and design patents.

Where the Revised Inventorship Guidance and prior guidance differ is more subtle. First, the prior guidance was published concurrently with a discussion of examples “to provide assistance to the public and examiners on the application of this guidance in specific situations.” Presumably, those examples are no longer useful in discussions with examiners.[2] Second, the Revised Inventorship Guidance rejects any reliance in the Pannu factors in determining inventorship between a human inventor and AI.[3] The prior guidance did rely on the Pannu in requiring that a human meet the test when determining inventorship on a claim-by-claim basis. And the first Pannu factor is that “a person must “contribute in some significant manner to the conception or reduction to practice of the invention,” which is always a requirement for inventorship.[4] So to the extent that there is daylight between the two sets of guidance, it is based on applying the traditional test for conception, rather than the Pannu factors, when there is only a single human inventor.

All in all, the tone of the Revised Inventorship Guidance may be more important than the changes from the previous guidance. It is far shorter and less legalistic, more in line with Director Squires’s “open for business” approach. It wasn’t published for notice and comment rulemaking, like the prior guidance, so it can more easily be revoked. Given that it relies on Federal Circuit precedent, however, that is unlikely in the absence of a change in the law. So perhaps the most important advice it provides lies in a sentence in the legal standards section: “There is no separate or modified standard for AI-assisted inventions.”

Nonetheless, a dose of caution is warranted, both for applicants and for practitioners. Just because the USPTO is unlikely to consider the inventorship during prosecution or post-grant review proceedings, this does not mean that you should not investigate carefully to ensure the proper inventors are named when the application is filed and when the patent issues. During the research process, the best practice is to keep a clean record of which features were human conceptions when AI is used in the ideation process. Challengers in court will likely scrutinize whether the human inventor(s) possessed a “definite and permanent idea” of the complete invention or merely had a “general goal or research plan” that the AI solved. If AI was used, the human inventor(s) may need to demonstrate (preferably with contemporaneously recorded evidence) that they conceived of each and every claim element themselves. Otherwise, the patent could be invalidated for incorrect inventorship or rendered unenforceable for inequitable conduct for intentional misrepresentation of inventorship.

One way for applicants to mitigate such risk is to document their specific vision of the invention, such as through sketches or written descriptions, before using an AI tool. Further, applicants should also retain records of any changes they made to designs after being generated by AI that relate to the claimed invention. Additionally, applicants should retain histories of their interactions with AI (e.g., prompt / response logs), as these records can serve as evidence that a human exercised control over the AI’s output and used the AI strictly for assistance.

Finally, the Revised Inventorship Guidance reiterates that a U.S. patent application claiming priority to a foreign patent filing must share at least one human inventor with that earlier application to be valid. When a foreign application has named an AI inventor, applicants can strip the AI from the inventorship list when entering the U.S. But the USPTO has made it clear that it will flatly reject any priority claim to a foreign application that names an AI system as the sole inventor, meaning applicants will effectively lose their earlier filing date if no human was originally named.

---

[1] For a fulsome discussion of the February 13, 2024 guidance, see https://patentdocs.org/2024/02/12/uspto-issues-guidance-about-inventorship-of-ai-assisted-inventions/.

[2] The examples were published at http://www.uspto.gov/​initiatives/​artificial-intelligence/​artificial-intelligence-resources. They are no longer available there.

[3] Indeed, the Revised Inventorship Guidance states that “Pannu is inapplicable when only one natural person is involved in developing an invention with AI assistance because AI systems are not persons and therefore cannot be ‘joint inventors’ so there is no joint inventorship question to analyze.”

[4] The other Pannu factors require a joint inventor to “(2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.”

By Michael S. Borella –

Once upon a time, patent eligibility was not controversial or difficult to understand. Then along came Alice Corp. v. CLS Bank, and with it the Supreme Court’s bright idea to replace statutory clarity with metaphysical hand-waving about so-called abstract ideas. The result has been a decade of improvisation, where examiners and judges try to divine the essence of a claimed invention by sniffing for abstraction like sommeliers. One of the most unintuitive outcomes is that an independent claim can be patent-eligible while a dependent claim that narrows it with more detail can be found ineligible.

To make the issue concrete, let’s consider two claims about routing data packets in a network.

1.          A computer-implemented method for dynamically routing data packets in a packet-switched network, the method comprising:

receiving, by a network interface of a router, a data packet comprising a header and a payload;

parsing, by a packet-processing module executed by a processor of the router, the header to extract a destination network address and a priority value;

analyzing, by the packet-processing module, a packet-type indicator contained in the payload to identify a packet type;

selecting, from among a plurality of output ports, an output port based on the destination network address, the priority value, and the identified packet type, in combination with current link-utilization metrics of the output ports stored in a routing table maintained in memory;

updating the routing table to record packet-transmission statistics associated with the data packet; and

transmitting the data packet via the output port.

This claim is about as technical as it gets. It involves a processor, a routing table, memory, and measurable performance metrics. The improvement is concrete; namely, dynamic routing based on link utilization and packet type to improve throughput. Under U.S. case law and patent office procedure, this claim should be a textbook example of non-abstractness. It is the kind of claim that can sneak through the Alice gauntlet.

Now, let’s add a dependent claim.

2.         The computer-implemented method of claim 1, wherein the packet type corresponds to a banking transaction, the payload comprising encrypted banking transaction data formatted according to a predefined financial messaging protocol, and wherein selecting the output port further comprises prioritizing the data packet for transmission over a low-utilization output port.

Here, the claimed invention still processes packets and it still selects output ports based on a combination of factors. The only change is that the payload now contains encrypted banking transaction data, and the routing algorithm prioritizes the packets for transmission on a low-utilization output port. Not only does this balance load but it allows these types of packets to be processed faster due to the relationship between network link utilization and latency.

And yet, under Alice, that dependent claim is probably ineligible. Why? Because the payload includes banking transaction data. Suddenly, one can argue that the invention is directed to the abstract idea of intermediating financial transactions. Never mind that the machine is still transmitting the same bits through network interfaces. The difference in the semantic content of the bits is determinative.

To be fair, the patentee still has an opportunity to argue that claim 2 in its full context (which includes all limitations of claim 1) recites an inventive concept that overcomes its allegedly abstract nature. However, the Alice test provides a number of pathways for contending that claim 2 fails to provide such an inventive concept. For example, courts may conclude that the type of narrowing of claim 2 is a field-of-use restriction rather than an inventive concept, or that speeding up financial transactions addresses a fundamental business need rather than a technical improvement. They may also view the limitations of claim 1 as well-understood, routine, and conventional, whereas this avenue would not be available when claim 1 is considered in isolation.

These two claims illustrate how the Alice framework can turn a concrete, machine-based process into an abstract idea merely by referencing the data to which the process is applied. Under this logic, there are cases in which the more specifically you describe a computer-implemented method, the greater the risk of ineligibility. A broad, generic claim about “routing data packets” may be safe. But narrow it down to “routing banking packets with latency reduction,” and it magically transforms into an abstract business concept. This inversion of logic punishes claim language precision, the very thing patent law is supposed to reward.

It is difficult to overstate how irrational these results can be. Routing packets? Not abstract. Routing packets containing medical data? Abstract. Encrypting chat messages? Not abstract. Encrypting stock trades? Abstract. In these cases, the technology has not changed. Instead, the message encoded in the bits determines whether the machine performing the task is concrete or abstract. It is like deciding that a hammer is a physical tool when driving nails to construct a table but an abstract idea when used to make a treasure chest.

This doctrinal absurdity doesn’t just distort legal reasoning. It also warps applicant behavior. Under Alice, applicants have a perverse incentive to claim their inventions more broadly than they otherwise would. Normally, a careful drafter writes claims to highlight concrete technical features such as precise hardware interactions, data structures, and control logic. But thanks to Alice, there are situations where the more you explain about what your system actually does, the easier it is for an examiner or judge to find in it an abstract idea. So applicants may hedge their bets by de-emphasizing the actual invention they wish to protect and keeping claims focused on the broader technical features. In some cases, this involves omitting any discussion of the actual intended use of the technology from the patent application completely. In other words, Alice can reward exactly the kind of overbroad claiming that its advocates continue to complain about.

By Manav Das –

We added some tariffs with pride,
Hoping that’ll keep rivals outside.
But inventors soon found
There was less cash around
And our own breakthroughs quietly died.

With all the talk about tariffs, and the recent Oral Hearing at the Supreme Court, I started wondering as to how this impacts intellectual property (IP). Tariffs are defined as taxes levied against imported goods, calculated as ad valorem tariffs, a percentage of the declared customs value. Since 2018, the United States government has significantly escalated the use of these tools, most notably through Section 301[1] of the Trade Act of 1974 and Section 232[2] tariffs. The current administration has used tariffs as a leverage in foreign policy. These tariffs are primarily intended to compel U.S. companies to diversify and move their manufacturing supply chains out of foreign countries and reinforce domestic industry. The long-term goal is to use this punitive tax as a negotiating tool, a revenue source, and a protective mechanism for favored domestic sectors.

Tariffs and IP:

So how do tariffs impact IP? The imposition of elevated tariffs creates immediate operational and financial stress, which flows directly into IP management decisions. The tariffs represent a substantial tax burden paid by US businesses[3]. This cost immediately drains capital resources that companies would otherwise allocate toward research and development, equipment investment, and job creation. Also, tariffs often go unnoticed in their interaction with intellectual property payments. Off-invoice payments, such as royalties and license fees associated with imported merchandise, carry the potential to significantly increase the dutiable customs value. 

The core adverse impact of tariffs on IP is the mandatory diversion of capital. By requiring companies to allocate billions of dollars in scarce resources toward tariff payments, the policy directly impedes investment in future innovation. Tariffs impact semiconductors[4], life sciences[5], quantum computing[6], and artificial intelligence[7], to name a few industries.

The negative financial impact of tariffs can be strategically offset to some extent by utilizing domestic policy incentives. The Credit for Increasing Research Activities[8] (R&D credit) is recognized by economists as a vital policy alternative or offset to protectionist trade measures. While tariffs increase the cost of doing business, the R&D credit functions as a subsidy to innovation by reducing tax liability.

Tariffs impact individuals as well, at least through inflation and disruptions to the supply chain. While companies may be able to offset some of their tariff-related costs, there are no corresponding “R&D credits” for individuals. Other than setting up companies and going through a demanding set of criteria, individual innovators have little to no tax benefits for innovative activities, including filing patents and related filing and attorney fees.

Tariffs and the Supreme Court:

The Supreme Court recently heard a consolidated case, Trump v. V.O.S. Selections[9] and Learning Resources v. Trump[10], that directly challenges the legality of wide-ranging tariffs imposed under the International Emergency Economic Powers Act[11] (IEEPA). This body of tariffs includes the “Reciprocal tariffs” and “Fentanyl tariffs”, which have raised the applied U.S. tariff rate and generated billions of dollars in revenue[12], paid by U.S. importers. The core legal question is whether Congress lawfully delegated sufficient authority to the President under the IEEPA to impose such sweeping taxes on imported goods. Notably IEEPA does not include the words “tariff” or “duty.” Challengers argue that the administration’s actions amount to an unconstitutional delegation, as Article I of the Constitution grants Congress the power to regulate commerce and set tariffs.

Lower courts, including the Court of International Trade and the Federal Circuit, have generally ruled against the broad IEEPA-based tariffs. Initial reporting of the Oral Hearings seems to indicate that the Supreme Court may be leaning toward agreeing with the lower courts. Should the Supreme Court decide that the IEEPA-based tariffs are unlawful and must end, then companies will experience a major reduction in import costs, freeing up capital for reinvestment in R&D, innovation, and equipment. On the other hand, should the Supreme Court uphold the IEEPA-based tariffs, businesses must treat high import taxes as a permanent, systemic risk. This reinforces the long-term strategic necessity of maximizing the R&D tax credit as an innovation offset and relocating supply chains to avoid persistent tariff exposure.

Tariffs and Taxes:

While the core purpose of the tariffs is ostensibly to bring manufacturing home and spur innovation, the adverse impact on R&D investment may certainly impede any such gains, and result in long-term loss of US competitiveness in global innovation leadership. I am not an economist, much less a political economist. Although to me, politics is the art of couching economic reality in the context of life, liberty, and the pursuit of happiness (consider themes from elections past: “read my lips, no new taxes,” “it’s the economy, stupid!” or the most recent buzzword: “affordability”). Whenever companies are faced with budget cuts, a knee-jerk reaction is to cut IP budgets, trim down IP portfolios and R&D teams, resort to trade secret protection, and so forth.  

I am not a tax specialist either. However, as a layman ruminating from the outside, it seems reasonable that there must be some instrument to protect R&D from the ravages of the political economy, or even the economy in general. The R&D tax credit appears to be one such instrument. There may be benefits in raising the tax credit for companies as a percentage of gross revenue. There may also be benefits in a graded scheme that allows for a higher percentage credit to companies with lower gross revenues.

However, this does not help individuals. A real benefit would be from giving a tax credit or a deduction to individuals for innovative activities. Such activities can be tailored to spur innovation. For example, experimental activities, software and equipment purchases, etc. where the credit or deduction is realized in the calendar year when there is a measurable end benefit, such as a designed product, a proof of concept, a launch of a startup, patenting activities, etc. I leave it to the experts to determine the precise points in the innovation lifecycle where such tax benefits may be most effective.

In the meantime…

Regardless of the Supreme Court’s outcome, IP and finance teams must implement strategies to manage tariff risks. Some options are:

Maximize the R&D Credit: The R&D credit remains an important tool, especially if tariffs are upheld, acting as a capital reclamation mechanism. The credit provides a 10% average return on investment (ROI) on qualified spending, offsetting the direct cost of tariffs on innovation capital.

Customs Compliance Audit: Cross-border licensing agreements must be rigorously audited to minimize the dutiable value risk. Royalty and IP-related fees can be structured carefully to prevent U.S. Customs and Border Protection (CBP) from deeming them dutiable, which would exacerbate the overall tariff liability.

Supply Chain Resilience: Investing in US-based R&D and domestic manufacturing serves as the ultimate long-term hedge against tariff uncertainty, reducing import cost exposure while strengthening IP protection under U.S. law.

In conclusion, the U.S. IP landscape is currently defined by profound economic uncertainty. Should the Supreme Court uphold the tariffs, this would codify the current elevated risk environment, transforming IP and R&D strategy from a compliance exercise into a necessity for corporate survival against sustained high import costs. If tariffs must serve as a protective mechanism for favored domestic sectors, there need to be offsetting credits for businesses and individuals to protect and increase R&D investment.

---

[1] Section 301 of the Trade Act of 1974, available at: https://www.congress.gov/crs-product/IF11346 (last accessed November 9, 2025).

[2] Section 232 of the Trade Expansion Act of 1962, available at https://www.congress.gov/crs-product/IF13006 (last accessed, November 9, 2025).

[3] The Economic Impact of Tariffs, Knowledge at Wharton, Penn Wharton Budget Model (PWBM) analysis, available at: https://knowledge.wharton.upenn.edu/article/the-economic-impact-of-tariffs/, April 2025 (last accessed on November 6, 2025).

[4] Short‑Circuited: How Semiconductor Tariffs Would Harm the U.S. Economy and Digital Industry Leadership, Information Technology and Innovation Foundation Report, available at: https://itif.org/publications/2025/05/21/short-circuited-how-semiconductor-tariffs-would-harm-the-us-economy/, May 2025 (last accessed on November 6, 2025).

[5] Impact of Proposed Tariffs on the Life Sciences Industry, KPMG, available at: https://kpmg.com/us/en/articles/2025/impact-of-proposed-tariffs-on-the-life-sciences-industry.html, 2025 (last accessed on November 6, 2025).

[6] Trade Deals May be a Hopeful Sign, But Tariffs Still Threaten U.S. Quantum Leadership, Quantum Insider, available at: https://thequantuminsider.com/2025/07/28/trade-deals-may-be-a-hopeful-sign-but-tariffs-still-threaten-u-s-quantum-leadership/, July 2025 (last accessed on November 6, 2025).

[7] How Trump’s Tariffs Could Make AI Development More Expensive, Time Magazine, available at: https://time.com/7275771/trump-tariffs-ai-development-china/, April 2025 (last accessed on November 6, 2025).

[8] 26 U.S.C. § 41, available at: https://www.law.cornell.edu/uscode/text/26/41 (last accessed November 9, 2025).

[9] V.O.S. Selections, Inc. v. Trump, No. 24-1287 (U.S. Nov. 5, 2025).

[10] Learning Resources, Inc. v. Trump, No. 24-1287 (U.S. Nov. 5, 2025).

[11] International Emergency Economic Powers Act, available at: https://www.congress.gov/crs-product/R45618 (last accessed November 9, 2025).

[12] Erica York, Alex Durante, Trump Tariffs: Tracking the Economic Impact of the Trump Trade War, Tax Foundation, October 31, 2025, available at: https://taxfoundation.org/research/all/federal/trump-tariffs-trade-war/ (last accessed November 9, 2025).

By Kevin E. Noonan –

The new Director of the Patent and Trademark Office, Undersecretary of Commerce for Intellectual Property John A. Squires has spent the last few weeks making serious policy changes in the Office (see “New Director Overturns PTAB Procedural Precedents: Part I“; “USPTO Proposed New Rules Limiting the Availability of Inter Partes Review, But Are They Legal?“).  Towards the end of last month, the Assistant Commissioner for Patents Brian E. Hanlon made his contribution, issuing a Memorandum to the Patent Examining Corps entitled “Advance notice of change to the MPEP with respect to false assertions or certifications of entity status.”

The Memorandum references an Official Gazette Notice on June 12, 2025 on “Statutory Penalties for False Assertions or Certifications of Small and Micro Entity Status,” later published at 1536 OG 204 (July 8, 2025).  Substantively that Notice informed the public that the Office could “institute a review of pending patent applications or patents to determine whether there is a false entity status claim that resulted in the payment of at least one fee in an unentitled reduced amount”; in a footnote the Assistant Commissioner was careful to reassure that this Notice does not suggest any lack of previous authority to review small entity status or had “previously refrained from doing so.”

The most recent Notice identified the changes to the M.P.E.P. that will effectuate the desired effects of the Memorandum, in particular M.P.E.P. § 410 (ante- and penultimate paragraphs), giving “employees reporting to the Assistant Commissioner for Patents that oversees the Office of Petitions” the authority to review a claim for small entity status entitlement “as well as [assessing] the reasonableness of their conduct” in doing so.  This portion of the Memorandum cites 37 C.F.R. § 11.18(b) for determining violation of an applicant’s or practitioner’s duties of disclosure and 37 C.F.R. § 11.18(c) for sanctions to be imposed in the event such violations are determined.

Further changes in M.P.E.P. § 509.03(b) are set forth with regard to “any attempt to fraudulently establish status as a small entity or pay fees as a small entity,” which will be considered to be fraud on the Office, and that an applicant cannot rely on any verbal advice “inadvertently” given regarding entitlement to small entity status.  The same “employees reporting to the Assistant Commissioner for Patents that oversees the Office of Petitions” referenced above are given the authority (“may review”) whether the applicant or patent owner is entitled to small entity status.  Similar provisions apply under M.P.E.P. § 509.04 for micro entity status under 37 C.F.R. § 1.29(j).

Finally, the Memorandum discloses provisions under M.P.E.P. § 1001.02(b) for reconsideration requests under circumstances that a claim for small entity status was determined to be “falsely made and not in good faith.”

These changes came into effect upon issuance of the Memorandum on October 24, 2025.

What the Memorandum does not do is provide any rationale or basis for or any evidence that claims to small or micro entity status are being improperly made.

By Kevin E. Noonan –

In a seemingly otherwise run-of-the-mill, albeit precedential, decision, the Federal Circuit affirmed a stipulated judgment of non-infringement in Aortic Innovations LLC v. Edwards Lifesciences Corp.

The case arose in litigation over the claims of Aortic’s U.S. Patent Nos. 10,881,538, 10,966,846, 10,987,236, and 11,129,735 directed towards devices for transcatheter aortic valve replacement; two alternatives of such devices are illustrated in the opinion as comprising a “balloon-expandable frame” and a “self-expanding frame”:

Claim 1 of the ‘735 patent is set forth in the opinion as representative:

1. An endovascular transcatheter valve assembly comprising:
an outer frame,
wherein the outer frame is formed from a metallic material and defines an open cell configuration
wherein the outer frame includes an inflow end at a proximal portion thereof and an outflow end at a distal portion thereof,
wherein the outer frame is formed by a plurality of struts that adjoin each other at the inflow end to form apices:
an inner frame that engages a prosthetic heart valve having prosthetic leaflets, wherein the inner frame includes a cylindrically extending inner graft covering extending at least partially radially outwardly of the prosthetic heart valve and radially inwardly of the outer frame for providing sealing to the prosthetic heart valve,
wherein the outer frame is secured to the inner graft covering by stitching a proximal portion of the outer frame;
an outer seal for preventing paravalvular leaks that at least partially extends over at least two most proximal rows of cells formed in the outer frame,
wherein the outer seal is formed of outwardly extending fibers positioned externally to the outer frame,
wherein the valve assembly has a radially com-pressed orientation and a radially expanded orientation,
wherein the valve assembly is configured to press some of the fibers against native leaflets of the aorta of the patient
wherein an end of the apices of the outer frame that are most proximal are covered by the outer seal and the graft covering,
wherein the end of the most proximal apices of the outer frame extends more proximally than a proximal end of the outer seal.

(wherein outer frame is italicized for being the claim element at issue in the case).

The District Court construed the term “outer frame” to be consistent with disclosure in the specification, particularly structure 416 identified in a dual-frame transcatheter valve illustrated by this Figure 20:

and structure 216 identified in a dual-frame endo-graft device illustrated by this Figure 9:

In this construction the District Court held that the term “outer frame” be interpreted as being interchangeable with “a self-expanding frame” as asserted by Edwards (rather than by its plain and ordinary meaning as Aortic argued) because Aortic had acted as its own lexicographer by using the terms “outer frame,” “self-expanding frame,” and “self-expanding outer frame” interchangeably.  The parties stipulated that under this construction Edwards’ accused SAPIEN 3 Ultra valve, a single, balloon-expandable frame did not infringe the asserted claims.

In the meantime, and relevant to this appeal, Edwards filed inter partes review petitions against the asserted patents and instituted IPRs for all but the ‘735 patent.  The District Court entered judgment based on the stipulation of non-infringement and this appeal followed.

The Federal Circuit affirmed, in an opinion by Judge Reyna and joined by Judges Prost and Chen.  (The Court dismissed the appeal for lack of jurisdiction regarding the ‘538 patent, in which the Patent Trial and Appeal Board held in a Final Written Decision that all claims were invalid, relying on Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013)).  Turning to the merits, the panel agreed with the District Court’s construction that the term “outer frame” comprised embodiments that were also “self-expanding” and that the terms are interchangeable, and affirmed the District Court’s claim construction accordingly.  The basis for the Court’s conclusion on this construction was that a patentee is permitted to be its own lexicographer, provided that a definition of a claim term “other than its plain and ordinary meaning” must be set forth clearly and when this written description is satisfied the term should be construed in that way, citing Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012).  This definition does not need to be disclosed as an explicit redefinition of a term otherwise having a plain and ordinary meaning, however, but may define terms by implication, under Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001).  This burden is greater than “[s]imply referring to two terms as alternatives or disclosing embodiments that all use the term[s] the same way[, which] is not sufficient to redefine a claim term” according to the opinion.  But should the patent disclose a “consistent and clear interchangeable use of two terms [this] can result in a definition equating the two terms” according to the Court, citing Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009); Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1282 n.6 (Fed. Cir. 2017); Bid for Position, LLC v. AOL, LLC, 601 F.3d 1311, 1317–18 (Fed. Cir. 2010); Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 968 (Fed. Cir. 2000); and Bell Atl., 262 F.3d at 1274–75 (and setting forth the bases in this precedent for the Court to arrive at a determination of redefinition).

The panel agreed with the District Court that “[h]ere, a skilled artisan would understand that the claimed term ‘outer frame’ is a ‘self-expanding frame,’” citing the portions of the specification relied upon by the District Court (structure 416 in Figure 20 and structure 216 in Figure 9).  According to the opinion, “this disclosure clearly indicates that structures 216 and 416 are outer frames that must self-expand.”  In addition, the panel cited the consistent disclosure in the specification that “claim 1’s ‘outer frame’ is a ‘self-expanding frame,’” citing multiple examples of such disclosure in the summary section.  Citing GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1370 (Fed. Cir. 2016), for the rubric that “when a patent repeatedly and consistently characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization,” the opinion asserts that “the specification clearly and consistently conveys that the self-expanding nature of structures 216 and 416 is present in all embodiments of those devices.”  In view of this understanding, the Court held that the District Court was correct that the skilled artisan would understand the disclosure to be consistent with this construction.

The opinion also somewhat summarily rejected Aortic’s additional argument that the Court should judicially estop Edwards from arguing that the term “outer frame” should be construed as anything other than its plain and ordinary meaning due to putative inconsistencies between their argument before the District Court and before the Patent Trial and Appeal Board during inter partes review proceedings, finding that Aortic had forfeited this argument by not raising it before the District Court.

Aortic Innovations LLC v. Edwards Lifesciences Corp. (Fed. Cir. 2025)
Panel: Circuit Judges Prost, Reyna, and Chen
Opinion by Circuit Judge Reyna

By Michael S. Borella –

From a technical standpoint, everything a computer does involves reading, manipulating, and storing information through microcode instructions that move around 0’s and 1’s. Each operation performed by a processor, such as addition, comparison, and data transfer, can be manually simulated as a series of these instructions. Undergraduate students in computer architecture courses routinely perform such exercises with a pencil and paper to understand how a processor works. In principle, one could simulate any software algorithm this way (albeit with the parallel portions serialized). But completing even modest tasks might take years.

U.S. patent law fails to appreciate these facts, and the consequences are absurd.

The law deems certain categories of inventions as ineligible for patenting, among them those drawn to so-called abstract ideas. Mental processes are a sub-category of abstract ideas. The reasoning behind this exclusion seems straightforward and even reasonable at first blush – if something can be performed purely in the human mind, like adding two small numbers or making a basic decision, it should not be patentable. However, the doctrine has expanded far beyond that.

Under decisions such as CyberSource Corp. v. Retail Decisions, Inc., courts have ruled that a mental process also includes tasks that could be performed by a human using pen and paper. The U.S. Patent and Trademark Office (USPTO) adopted the same stance in its Manual of Patent Examining Procedure (M.P.E.P.) § 2106, asserting that there is no distinction between processes performed entirely in the mind and those that require physical aids. Courts have gone even further, declaring that claims performed by a computer can still be considered mental processes. Cases like Mortgage Grader v. First Choice Loan Services and Intellectual Ventures I v. Symantec treat computer-implemented methods as mental acts simply because they can be theoretically replicated by the human mind.[1]

This principle is a legal fiction. A process that requires a machine executing billions of instructions per second is treated as if it were a mere mental exercise even though it is not and never could be. No amount of coffee will help a person think their way through these complex calculations, much less at a rate that would provide a useful result in a reasonable period of time. And the consequences can be dire for patentees, with claims to legitimately innovative technical inventions being rejected by the USPTO or invalidated by courts because their steps could be simplified to appear analogous to human thoughts.

In In re Killian, the Federal Circuit wrote a small treatise defending this nonsense.  The USPTO’s Patent Trial and Appeal Board (PTAB) continues to wield the mental steps doctrine like a sledgehammer against software applicants, affirming examiners’ patent eligibility rejections at a very high rate.

The USPTO’s own guidance attempts to draw a line between processes that “can practically be performed in the human mind” and those that cannot. Examples deemed mental include generic data analysis and DNA sequence comparison, while examples deemed non-mental include GPS position calculations, network packet inspection, and certain encryption methods. Yet the logic behind these distinctions is paper-thin.

For example, comparing BRCA1 and BRCA2 gene sequences – which the USPTO believes to be mental tasks – involves analyzing tens of thousands of DNA base pairs, an undertaking as unsuited for human performance as inspecting hundreds of network packets, which the USPTO classifies as non-mental. The supposed boundary between these categories has no technical coherence.

The doctrine collapses because it confuses what is theoretically imaginable with what is physically possible. While a human could, given enough time and paper, emulate any computer program, that does not make machine-based computation a mental act. Software execution is a physical process of manipulating electrical states in silicon, not a series of thoughts.

By treating computer-implemented algorithms as abstract mental activities, courts ignore the physical nature of software execution and the integral relationship between code and hardware. Software causes a machine to change states and behaviors when its instructions are performed. Separating the idea of the algorithm from the computer that carries it out distorts both technology and law. This is like confusing a mere recipe with the act of cooking using kitchen utensils and appliances.

This confusion has especially damaging effects on emerging fields like machine learning. Despite the USPTO’s own examples showing that certain machine learning claims are not drawn to mental processes, examiners frequently reject similar claims as ineligible. The reasoning is circular: because a neural network follows mathematical logic, it can be performed mentally, even though no human could realistically simulate millions of weighted matrix operations by hand.

The current application of the mental steps doctrine, coupled with the Supreme Court’s overly-broad abstract idea exclusion, has made software patent eligibility unpredictable and irrational. Courts invoke metaphysical distinctions between “thinking” and “computing” while ignoring the physical, technical character of modern digital systems. As a result, patent examiners are left to apply vague rules that depend more on inconsistent precedent and personal interpretation than on consistent reasoning.

A rational approach would confine the doctrine to its original intent – excluding only those inventions truly meant to be performed mentally by humans. A claim to a method that requires a computer should not be treated as a mental process simply because it can be described in terms of steps that have an attenuated relationship to human thought.

If anyone still insists that computers and human minds are analogous for patent eligibility purposes, I invite them to prove it. Go ahead and train a large language model in your head. Memorize billions of parameters, calculate trillions of matrix multiplications, backpropagate the gradients, and fine-tune it across terabytes of text. You have to do it all mentally, of course, or maybe with a handy pen and paper if you need a physical aid. But you can’t do it because no human can. If you disagree, then go ahead and try and show me the results. I’ll wait but probably not long enough, because by the time you finish the sun will have boiled the oceans and swallowed the Earth.

* This article has been adapted from the author’s earlier article, “The Mental Process Exception to Patent Eligibility is Remarkably Brainless,” Patent Docs, Jan. 9, 2023.

---

[1] To be fair, a claim deemed abstract can still be eligible if it also recites an “inventive concept.” But in practice, this can be quite difficult because once a claim is characterized as directed to an abstract idea, courts often view most or all of its features as part of that abstraction. Further, generic hardware or using routine functions cannot provide an inventive concept. The courts have set a high bar for a claim surviving once it has been damned to the Hell of abstraction.