Memorandum on August USPTO subject-matter eligibility (SME) serving as beneficial guidance for computer-related innovations and software-based creations

Memorandum on August USPTO subject-matter eligibility (SME) serving as beneficial guidance for computer-related innovations and software-based creations

Commissioner Kim's August 4, 2025 memorandum, known as the "Kim Memo," provides detailed reminders and clarifications for patent examiners on applying existing subject matter eligibility (SME) guidance, particularly for software-related inventions such as AI, machine learning, software, or embedded software.

The memorandum reinforces the USPTO’s application of the Alice/Mayo framework for evaluating patent eligibility under 35 U.S.C. § 101, focusing on the Step 2A analysis. It aims to help applicants by clarifying how examiners should analyze claims to determine if they integrate or improve technology rather than merely reciting judicial exceptions like abstract ideas.

Key points of the Kim Memo guidance include:

1. Emphasis on Step 2A Prong Two of the Alice/Mayo framework: Examiners are directed to evaluate claims as a whole to see if the claim integrates the judicial exception into a practical application or provides a technological improvement. Claims that improve computer capabilities or a technical field support a finding of eligibility.
2. Distinction between reciting a judicial exception and involving one: The memo stresses that claims which simply recite an abstract idea without more should be rejected only when ineligibility is more likely than not. This helps avoid improper rejections where the claim actually applies the exception in a meaningful technical way.
3. When to issue SME rejections: The memo instructs examiners to only make a rejection if it is more likely than not (greater than 50% probability) that the claim is ineligible under § 101. "Close calls" should be resolved in favor of eligibility to avoid unfair rejection of novel inventions.
4. Focus on technological improvement or inventive concept: Examiners are reminded to consider whether the limitations improve technology or technical fields, or otherwise add significantly more than the judicial exception. This can include improvements in AI or machine learning processes that go beyond generic computing resources.
5. Reinforcement of existing USPTO SME practice: While not introducing new policy, the memo clarifies common points of confusion and encourages thorough analysis. This clearer guidance aims to make the examination process more predictable and fair, especially for software and AI-related inventions.

In summary, the Kim Memo helps applicants by providing examiners with clearer, more consistent instructions on analyzing AI, machine learning, software, or embedded software claims for patent eligibility. It encourages a careful examination of claims to identify real technological improvements or practical applications rather than premature, broad rejections under the Alice/USPTO SME framework. This increases the chance for applicants to establish patent-eligible subject matter and overcome § 101 challenges in the evolving software and AI patent landscape.

The Kim Memo also advises against oversimplification of the claims, particularly for machine learning operations that involve complex computations. It reinforces the preponderance standard for issuing a § 101 rejection, meaning that a rejection should only be made if it is more likely than not that the claim is ineligible.

The guidance is helpful both for drafting patent applications and preparing responses to examiner rejections. It offers valuable advocacy supports for applicants seeking to establish patent-eligible subject matter, particularly for demonstrating that claims satisfy the requirements of the Alice/USPTO SME framework. The Kim Memo provides authoritative language to help respond to overly expansive § 101 rejections in relation to technological advances embedded in AI and software innovations.

If the factual predicates for a § 101 rejection are debatable, the uncertainty mandates withdrawal of the rejection. The Kim Memo provides guidance on integration into a practical application, offering support for practitioners to more persuasively demonstrate that their claims satisfy each stage of the Alice / USPTO subject matter eligibility framework.

The Kim Memo offers a detailed clarification for patent examiners, emphasizing the importance of analyzing claims related to AI, machine learning, software, or embedded software for patent eligibility under the Alice/Mayo framework. It encourages a thorough examination of these claims to identify real technological improvements or practical applications, rather than premature, broad rejections.

Artificial intelligence (AI) and machine learning processes that go beyond generic computing resources are considered when evaluating the eligibility of claims. It is crucial to avoid oversimplification of these complex operations in patent applications and responses to examiner rejections.

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