On August 4, 2025, the United States Patent and Trademark Office (USPTO) issued a memorandum to examiners in Technology Centers 2100, 2600, and 3600, addressing the evaluation of subject matter eligibility under 35 U.S.C. § 101, particularly for software-related inventions, including Artificial Intelligence (AI) and Machine Learning. At Lambert Shortell & Connaughton, we understand the complexities and unpredictabilities of securing patents in these cutting-edge fields. This memo, while not introducing new policies, serves as a critical reminder of existing guidance that examiners have frequently overlooked and highlights a nuanced stance on mental processes that could strengthen arguments for patent eligibility.
In the past few months, we have observed the USPTO taking an increasingly aggressive stance toward software-related applications, applying the Alice/Mayo framework in ways that often appear arbitrary. In many cases, examiners have disregarded clear instructions in the MPEP and binding case law, leading to unpredictable and inconsistent outcomes. These practices have created significant challenges for innovators in rapidly evolving fields such as AI and software. We are optimistic that the issuance of this memorandum will prompt a shift toward more measured and consistent examination, encouraging adherence to established guidance and resulting in more predictable and reasonable subject-matter-eligibility-related decisions.
Nothing New, But a Necessary Reminder
The USPTO’s memorandum explicitly states that it “is not intended to announce any new USPTO practice or procedure” and is meant to align with existing guidance in the Manual of Patent Examining Procedure (MPEP) and the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (AI-SME Update). However, its issuance underscores a persistent issue: examiners have not consistently applied the USPTO’s subject matter eligibility framework, particularly in software and AI-related patent applications. The memo reiterates key principles from the MPEP and the AI-SME Update, emphasizing proper application of Step 2A of the eligibility analysis, which determines whether a claim is directed to a judicial exception (e.g., an abstract idea) and, if so, whether it integrates that exception into a practical application.
This reminder is particularly relevant for software and AI patent applicants, where rejections under § 101 are common. The memo addresses recurring examiner errors, such as overgeneralizing claims as abstract ideas or failing to consider the claim as a whole. For innovators facing unwarranted rejections, this memo reinforces that examiners must adhere to established guidelines—a point our firm leverages to advocate for our clients’ patent rights.
A Shift in Defining Mental Processes: A Strategic Opportunity
One of the memo’s most intriguing clarifications is its guidance on the “mental process” grouping of abstract ideas. Historically, the USPTO has taken a broad view, often classifying claims as mental processes if they could theoretically be performed in the human mind or with pen and paper, even if such performance was impractical. This expansive interpretation has led to frequent rejections of software and AI-related claims, frustrating applicants whose inventions involve complex computations.
The August 2025 memo, however, emphasizes that claim limitations involving calculations that “cannot practically be performed in the human mind” do not fall within the mental process grouping. For example, the memo references claims involving AI that require computational processes beyond human capability, such as those in the AI-SME Update (e.g., a hardware-based RFID serial number data structure with unique encoding). This clarification marks a departure from the USPTO’s historically generous stance on what constitutes a mental process, opening a strategic avenue for patent applicants.
For innovators in AI and software, this guidance is a game-changer. Claims that involve sophisticated algorithms or data processing—such as training neural networks with large datasets or performing real-time anomaly detection—may now more readily avoid classification as abstract ideas if they exceed human mental capacity. Our firm is well-positioned to craft arguments that highlight the technical complexity of your invention, aligning with this guidance to overcome § 101 rejections.
Practical Implications for Patent Applicants
The memo also provides reminders on other critical aspects of the eligibility analysis, including:
• Distinguishing “reciting” vs. “involving” a judicial exception: Claims that merely involve an abstract idea (e.g., training a neural network without specifying mathematical calculations) are eligible without further analysis, unlike claims that explicitly recite mathematical algorithms (e.g., backpropagation or gradient descent).
• Analyzing the claim as a whole: Examiners must consider how all claim limitations interact, rather than evaluating additional elements in isolation.
• Improvements to technology: Claims that reflect an improvement to the functioning of a computer or another technical field (e.g., enhancing network intrusion detection) can integrate an abstract idea into a practical application, rendering the claim eligible.
• Avoiding oversimplification: Examiners are cautioned against oversimplifying claims as mere instructions to “apply” an abstract idea on a computer, particularly when the claim provides a specific technological solution.
Additionally, the memo advises examiners to make § 101 rejections only when it is more likely than not that a claim is ineligible, reinforcing the need for a preponderance of evidence. This directive can be a powerful tool for applicants challenging questionable rejections.
How We Can Help
The USPTO’s August 2025 memorandum is a timely reminder that examiners must adhere to established eligibility guidelines, particularly in the complex domains of software and AI. At Our Firm, our experienced patent attorneys specialize in navigating § 101 challenges. We can:
• Craft robust patent applications: We draft claims and specifications that emphasize technical improvements and computational complexity to align with the USPTO’s guidance.
• Overcome rejections: Leveraging the memo’s clarifications, we develop targeted arguments to demonstrate that your invention is not a mental process or is integrated into a practical application.
• Stay ahead of USPTO trends: Our team monitors USPTO guidance, including the AI-SME Update and July 2024 Subject Matter Eligibility Examples, to ensure your application reflects the latest standards.
If you are facing a § 101 rejection or seeking to file an AI patent or software patent, contact us today. Let us help you secure the protection your innovation deserves.