Since the Supreme Court’s 2014 Alice decision, U.S. patent law has included a two-step test for subject matter eligibility (SME): first, determine if a claim is directed to an abstract idea, and if so, then ask if it contains an “inventive concept” that makes it patent-eligible. For software and AI-based inventions, this framework has been notoriously difficult to navigate because it is often unclear what counts as an “abstract idea” versus a “technological improvement.” As a result, SME remains one of the most challenging and unpredictable issues in patent law, with inventors and practitioners struggling to craft claims that satisfy shifting case law and USPTO guidance.
Two recent USPTO developments relating to SME for AI/software inventions are of particular interest to patent practitioners.
In August of 2025, Deputy Commissioner Charles Kim issued a memo to examiners in Technology Centers 2100, 2600, and 3600, in which the agency’s official guidance regarding software and AI-related inventions was restated. Notably, the memo included several “reminders” to examiners about how to properly evaluate subject matter eligibility and cautioned them not to issue § 101 rejections simply because they are “uncertain as to the claim’s eligibility.”
The following month, in one of his first official acts as the 60th director of the USPTO, John Squires issued a decision on request for rehearing in Ex parte Desjardins (Appeal No. 2024-000567; application 16/319,040). In the decision, Director Squires vacated a § 101 rejection for claims directed to a computer-implemented method of training a machine learning model that had been issued sua sponte by the PTAB. He cautioned that “[c]ategorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology,” while emphasizing that “§§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope … [and] should be the focus of examination.”
If the Kim memo could be viewed as a gentle reminder that examiners should be more judicious in their issuance of § 101 rejections for AI and software claims, then the Desjardins rehearing decision marks a clear signal that the new leadership at the Office intends to take a pro-patent stance on the controversial SME issue. While the Desjardins decision is not officially designated as “precedential,” practitioners can view Squires’ action as an aggressive push to curtail the volume of § 101/SME rejections tendered by examiners and largely permit the patenting of AI-related inventions.
G&G was pleased to sponsor a table at the recent IPLAC Judges Dinner at the Union League Club of Chicago.
We thank IPLAC for organizing and hosting this 130th Annual Dinner to Honor the Federal Judiciary. Congratulations to Judge John F. Kness, U.S. District Court for the Northern District of Illinois, who received this year’s IPLAC Distinguished Judicial Service Award.
Special thanks to clients and colleagues who joined us for the event. It was great to see you all there.
Pictured from left to right:
Jim Stephenson, Senior Legal Counsel, Aeris (now Arity)
Atanu Das, Partner, G&G
Zain Sadiq, Senior Associate, IP Strategy, JP Morgan Chase
Lawrence Cosby, Assistant General Counsel, Intellectual Property, JP Morgan Chase
Elizabeth Spahn, Guest of the Honorable Judge Gerald Cohn
Honorable Gerald Cohn, Most Recently Federal Judge at U.S. District Court for the Middle District of Pennsylvania
Dan Bestor, Senior Director – Patent Operations, Motorola Solutions
Christine Cochran, Associate General Counsel, Intellectual Property, Northwestern University
Ed Guntin, Managing Partner, G&G
Brad Bidwell, Assistant General Counsel, Knowles Corporation
IPLAC – Intellectual Property Law Association of Chicago, is the first association of its kind in the US. The organization is committed to protecting innovation both in Chicago and nationally, “by advancing the tenets of IP law in order to serve our members and greater community.” IPLAC accomplishes their mission by offering members opportunities for professional growth and development, networking opportunities and events that serve to create a diverse and inclusive environment while promoting the advancement of IP law.
We are so proud of our talented team of Paralegals:
Jill Holman
Stacey Hill
Devon Weide
Wyatt Hill
Kalie Schnabel
Barbara Salchow
Levi Lapham
Today we celebrate you – your dedication and the professionalism that you bring to your work. Your tireless efforts are the backbone of our success.
Your organization, support and attention to detail ensure that our client’s cases are handled with the utmost care and integrity.
Thank you for being the skilled hands and sharp minds that keep the firm running smoothly. We value your contributions and the vital role you play at Guntin & Gust.
Happy National Paralegal Day!
Guntin & Gust is proud to commemorate the Firm’s 15th Anniversary. We take this opportunity to celebrate the incredible contributions that our team has made to the evolution and advancement of the Firm.
Over the past five years, we have added a significant number of new clients and are firmly positioned on a path of sustained growth. This milestone is a testament to our collective dedication and innovation, paving the way for continued success.
To prepare for this growth, the firm has been making substantial investments in scalability across all areas. From adapting FIP logic to seamlessly align with client policies, automating billings through advanced FIP and macro logic, balancing attorney dockets effectively, to adopting cutting-edge AI drafting tool —these initiatives are designed to equip us for the future. They are not only strategic decisions but part of our commitment to efficiency and excellence.
As we look toward the future, we anticipate many more years of growth and shared success.
World IP Review (WIPR) has published their Diversity’s Top 100 List for 2024. The list identifies outstanding contributors within the IP community committed to providing equal employment opportunities to all individuals.
World IP Review, WIPR, is a news source providing information and events affecting the IP community. Their daily newsletters and quarterly publications report on IP issues facing businesses, in-house counsel and IP lawyers. Additionally, WIPR produces a number of Technology and Life Science IP events worldwide.
