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ARTICLE · 20 AUGUST 2025

USPTO Clarifies Software-Based Inventions Eligibility Evaluation In New Memorandum

Lerner David Littenberg Krumholz & Mentlik, LLP
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The United States Patent and Trademark Office (USPTO) issued a memorandum ( "Memo") to examiners in Technology Centers 2100, 2600, and 3600 on August 4, 2025.

United StatesIntellectual Property
Melanie A. Chernoff
Melanie A. Chernoff
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The United States Patent and Trademark Office (USPTO) issued a memorandum ( "Memo") to examiners in Technology Centers 2100, 2600, and 3600 on August 4, 2025.  The Memo further clarifies prior guidance on how to evaluate subject matter eligibility for software-based inventions under 35 U.S.C. § 101. While the Memo is intended for examiners, it provides valuable insights for patent practitioners.

The Memo highlights aspects of the analysis examiners should undertake when applying Step 2A of the Alice/Mayo framework.

Step 2A Prong One

Clarified "Mental Process" Grouping of Abstract Ideas: The Memo clarifies that a claim does not recite a mental process if its limitations cannot practically be performed in the human mind. This is particularly impactful for AI-related inventions, where examiners often resort to "mental process" in rejecting such inventions as abstract ideas.  It is now clear going forward that claims encompassing AI in a way that cannot be

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