CSG Law Alert: Ex parte Desjardins: USPTO Director Signals Shift Towards Broader Patent Eligibility for AI Inventions
On September 26, 2025, the Appeals Review Panel (APR) of the United States Patent and Trademark Office (USPTO) issued a significant decision in Ex parte Desjardins, Appeal No. 2024-000567, signaling a policy shift towards broader patent eligibility for artificial intelligence (AI) inventions. The decision was authored by USPTO Director John Squires and designated as precedential on November 4, 2025.
Background
The patent application at issue, U.S. Patent Application No. 16/319,040, relates to training machine learning models. The specification describes various advantages associated with such training, including learning new tasks in succession while protecting knowledge about previous tasks, using less storage capacity, and enabling reduced system complexity.
During prosecution, the examiner rejected the claims as being obvious under 35 U.S.C. §103. On appeal, the Patent Trial and Appeal Board (PTAB) affirmed the obviousness rejection and entered a new ground of rejection under 35 U.S.C. §101 as being directed to patent ineligible subject matter. The Applicant filed a Request for Rehearing, which was denied by the PTAB in all respects. Director Squires convened the ARP to review the PTAB’s decision sua sponte, and Direct Squires himself authored the decision.
ARP Decision
35 U.S.C. §101 identifies patentable subject matter as any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. However, under the Supreme Court’s “Alice” holding, laws of nature, natural phenomena, and abstract ideas are judicial exceptions to patentable subject matter, and therefore not patentable. Under guidance issued by the USPTO for examiners evaluating claims under §101, claims that recite additional elements that integrate a judicial exception into a practical application are patent eligible.
In evaluating the claims at issue in Ex parte Desjardins under §101, the ARP relied on Enfish, which recognized that claims directed to an improvement in the functioning of a computer, or an improvement to other technology or technical field are patent eligible because they integrate the otherwise judicial exception into a practical application. Noting that the specification identifies improvements in training the machine learning model itself and that the claim language reflects the disclosed improvement, the ARP found that the claims were directed to an improvement to how the machine learning model itself operates and were therefore patent eligible under § 101.
Broader Implications
While the ARP decision serves as binding precedent on USPTO examiners and panels, it is not binding on the courts. However, the ARP decision provides clarity within the USPTO for obtaining patent protection for AI inventions. The ARP decision appears to signal a policy shift, making it easier to patent AI inventions where there is an improvement to how a machine learning model itself operates.
In the ARP decision, Director Squires recognized the “confusing nature of existing §101 jurisprudence” while cautioning that “[c]ategorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology.” He warned USPTO examiners and panels from evaluating claims at a high level of generality by equating any machine learning with an unpatentable “algorithm” and the remaining additional elements as “generic computer components.” Director Squires further emphasized that “§§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper score” and that “[t]hese statutory provisions should be the focus of examination.” In view of Director Squires’ statements, and the Ex parte Desjardins decision, we expect that Applicants may receiver few subject matter rejections, and such rejections may be easier to overcome
If you have any questions about how this development may affect your ability to protect your inventions or your existing patent applications, please contact one of the authors of this alert.