Patent Eligibility for AI and Software: What’s Changed and What Works

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This program examines critical 2025-2026 developments in patent eligibility for software and AI inventions and provides strategic guidance for prosecution and litigation. Attendees will analyze the Federal Circuit's Recentive Analytics v. Fox decision (April 2025), which held that applying generic machine learning to new data environments is patent-ineligible absent technological improvements to the ML process itself; the August 4, 2025 memorandum from Deputy Commissioner Charles Kim reminding examiners to limit mental process groupings to claims that cannot practically be performed in the human mind, distinguish claims that recite versus merely involve judicial exceptions, analyze claims as a whole, and apply the preponderance standard for rejections; USPTO Director John Squires' precedential Ex parte Desjardins decision (September 2025, designated precedential November 2025), which reversed a PTAB § 101 rejection and found that improvements to ML model operation constitute patent-eligible technological advancements under Enfish; and Director Squires' December 4, 2025 memoranda on Subject Matter Eligibility Declarations (SMEDs), which encourage applicants to submit Rule 132 declarations with objective evidence demonstrating that claimed inventions cannot practically be performed in the human mind or provide technological improvements, and require examiners to consider and address such evidence. 

Attorneys will learn to:

• Draft AI/ML claims emphasizing technological improvements that satisfy Recentive requirements.

• Leverage the Kim memo, Desjardins, and SMED guidance to challenge improper § 101 rejections.

• Prepare effective SMEDs using objective evidence and expert testimony.

• Identify patent-eligible improvements in client inventions.

• Develop prosecution strategies aligned with current USPTO policy.

• Counsel clients on portfolio development in light of these favorable developments.

 

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