Reminder Memo on August Subject-Matter Eligibility (SME) from USPTO - Beneficial for Inventions in Computers and Software

Reminder Memo on August Subject-Matter Eligibility (SME) from USPTO - Beneficial for Inventions in Computers and Software

The US Patent and Trademark Office (USPTO) has issued a new memorandum, the Kim Memo, to provide guidance on evaluating the patent eligibility of claims involving artificial intelligence (AI), machine learning, software, or embedded software. Commissioner Kim's August 4, 2025 memorandum aims to improve clarity and reduce uncertainty in software-related inventions, particularly those involving AI.

Key points from the Kim Memo include:

• Clarification on Step 2A Analysis: Examiners are reminded to properly evaluate whether claims are "directed to" a judicial exception (such as an abstract idea) or merely involve it without being "directed to" it. This distinction is particularly important for software and AI claims, where mental processes and algorithms often overlap with abstract ideas.
• Mental Process Grouping of Abstract Ideas: The memo cautions against over-relying on the mental process category of abstract ideas when analyzing AI and machine learning claims. It recognizes that AI claims frequently involve computational processes that could be mistaken for abstract mental steps without proper context.
• Focus on Practical Application: The memorandum encourages examiners to consider whether the AI or software claim recites a practical application or improvement in technology, which is a pivotal factor in proving patent eligibility under existing USPTO guidance.
• Avoiding Confusion with Prior Art: The memo reminds examiners not to conflate subject matter eligibility analysis with novelty or non-obviousness, which are separate patentability requirements. Claims should not be rejected on the basis of eligibility merely because they align with known prior art.
• Supporting AI Innovation: The guidance implicitly supports recognizing AI and software inventions as patent eligible when they meet existing legal standards, aligning with broader policy goals to maintain U.S. competitiveness in AI innovation and reduce legal uncertainty around AI-assisted inventions.

The overall impact of the Kim Memo is to reaffirm and refine the USPTO’s application of the Alice framework to reduce inconsistent denials and confusion surrounding AI and software patents. It instructs examiners to apply the existing SME framework with greater nuance, especially as AI technologies continue to evolve.

This means that AI and machine learning claims will be analyzed under the USPTO's SME framework with careful consideration of whether claims are practically applied innovations or simply abstract ideas, less over-reliance on the mental process abstract idea grouping, and clear separation of subject matter eligibility from other patentability assessments.

The Kim Memo is relevant for both drafting patent applications and preparing responses to examiner rejections. It offers valuable advocacy supports for applicants seeking to establish patent-eligible subject matter and provides applicants with authoritative language to help respond to § 101 rejections. The memo is particularly relevant for machine learning operations that involve complex computations.

The Kim Memo is directed to Technology Centers 2100, 2600, and 3600 and is not a rule change but rather guidance to be considered by examiners when making subject matter eligibility determinations. It does not create a presumption of patent-eligibility for any specific technology or claim type.

This memo responds to concerns about legal uncertainty regarding AI patent claims and signals a more examiner-friendly and consistent approach to patent eligibility of AI inventions under the Alice/USPTO SME framework.

[1] Source: USPTO website [3] Source: Federal Circuit decision [5] Source: Patent Trial and Appeal Board decisions citing the Federal Circuit decision

1. The Kim Memo, issued by the USPTO, provides guidance to examiners on evaluating the patent eligibility of claims involving artificial intelligence (AI), machine learning, software, or embedded software, aiming to clarify the application of the Alice framework and reduce inconsistent denials and confusion.
2. When examining AI and machine learning claims under the USPTO's SME framework, it is crucial to carefully consider whether claims are practically applied innovations or simply abstract ideas, and to avoid over-relying on the mental process abstract idea grouping.

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