Rejections of patent applications as being directed to patent-ineligible subject matter can be difficult to overcome, particularly for artificial intelligence or software-related applications. While arguments that a patent claim incorporates any ineligible abstract idea into a practical application or provides a technological advance over the prior art are supposed to be sufficient to overcome a rejection, they ultimately rely on the Examiner’s discretion to withdraw their own rejection – and getting someone to say they were wrong can be challenging at the best of times. Providing credible extrinsic evidence, however, can significantly strengthen those arguments.

On September 26, 2025, John Squires, the Under Secretary of Commerce and Director of the USPTO, vacated a PTAB decision that ruled an AI invention ineligible for patenting, emphasizing the need for Examiners to adhere to Federal Circuit precedents like Enfish. This decision demonstrates his commitment to ensuring that genuine technological improvements receive appropriate patent protection.

On August 4, 2025, the USPTO issued critical guidance that could significantly reduce § 101 rejections for AI and software patents. This memorandum reinforces existing law but provides examiners with clearer boundaries and a higher standard for making eligibility rejections. For companies developing AI, machine learning, and software technologies, this guidance represents a more favorable examination environment and opportunities to overcome previously problematic rejections.