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Cantor Colburn Client Alert: USPTO Issues Memo on “Reminders on Evaluating Subject Matter Eligibility of Claims Under 35 U.S.C. 101”
On August 4, 2025, the Deputy Commissioner for Patents issued a memorandum titled “Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101” (“Memo”). The Memo reinforces existing guidance on assessing subject matter eligibility, particularly for software and artificial intelligence (AI)-related claims. It does not create new rules but emphasizes the consistent application of current U.S. Patent and Trademark Office (USPTO) procedures.
Overview of the Memo
The Memo clarifies that the USPTO’s approach to subject matter eligibility under 35 U.S.C. § 101 remains unchanged, focusing on uniform application of the Alice/Mayo framework, as detailed in the Manual of Patent Examining Procedure (MPEP) and the July 2024 AI Subject Matter Eligibility Update.
Examiners are instructed not to expand the “mental process” category of abstract ideas to include limitations that cannot practically be performed in the human mind. Examiners are also reminded to distinguish between claims that recite a judicial exception (requiring further analysis) and those that merely involve one (generally eligible without further scrutiny). The Memo affirms that USPTO Example 39 remains a relevant guidepost for analyzing eligibility.
Additionally, examiners must evaluate claims holistically, considering how all limitations interact, rather than analyzing them in isolation. For claims reciting a judicial exception, examiners should determine whether the claim integrates the exception into a practical application, such as improving computer functionality or another technical field, or imposes meaningful limits beyond a generic technological environment. The specification should support such improvements, even if not explicitly recited in the claims. Finally, the Memo directs examiners to issue § 101 rejections only when a claim is more likely than not ineligible, ensuring uncertainty alone does not justify a rejection.
Takeaways
The Memo does not establish new examination rules but reinforces consistent application of existing eligibility analysis, requiring rejections to be supported by a preponderance of evidence. Applicants seeking protection for software and AI inventions should draft specifications and claims that clearly articulate technical improvements and problem-solving aspects. Responses to eligibility challenges should be precise, targeted, and grounded in the USPTO’s established policies, leveraging examples like USPTO Example 39 to demonstrate practical applications of the invention.
For Further Information and Assistance
Attorneys in Cantor Colburn’s Computer Science Practice Group and Artificial Intelligence Practice Group have substantial experience representing clients in these types of matters.
Primary contacts:
- David Kincaid, Partner and Artificial Intelligence Practice Co-Chair
- Jeffrey Waters, Partner in Charge of the Atlanta Office and Computer Science Practice Chair
We welcome your questions regarding this matter or any other intellectual property concerns.
This client alert was written by David Kincaid and Jeffrey Waters. To learn more about Cantor Colburn, one of the largest and most productive full-service intellectual property law firms in the U.S., please visit www.cantorcolburn.com.
Please note: Each situation involves unique circumstances and implications. This Client Alert is provided for informational purposes only and does not constitute legal advice.
