New USPTO Memorandum on Subject Matter Eligibility (§ 101)

On August 4, 2025, Deputy Commissioner of Patents Charles Kim issued a new Memo to examiners called “Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101.” The Memo is specifically addressed to Technology Centers 2100 (Computer Architecture, Software, and Information Security), 2600 (Communications), and 3600 (which includes Electronic Commerce).

The key question is whether the Memo will reign in the expansive use of § 101 rejecting software and AI technology.

A first cursory review would suggest no change. The Memo specifically says “it is not intended to announce any new USPTO practice or procedure and is meant to be consistent with existing USPTO guidance.” It refers to the same sections of the MPEP, states that examiners should use “the flowchart provided in MPEP 2106, Subsection III,” continues to use the same examples, and refers to the same guiding principles we have seen.

But there is room for optimism that the Memo may be part of a shifting mindset at the USPTO that could result in real change.  The problem with § 101 for the past ten years has not been due to poor guidance; it has been a failure to apply the guidance and an Office philosophy that defaults to consistently rejecting software and AI under § 101. But this current Memo from Deputy Commissioner Kim expresses a different Office mindset, even pointing out that for a “close call” the default should be to not reject under § 101 because “unpatentability must be established by a preponderance of the evidence.” The memo also emphasizes “distinguishing claims that recite a judicial exception from claims that merely involve a judicial exception.” This is a key point that examiners commonly miss. The Memo also reminds examiners not to expand the “mental process grouping” to encompass “claim limitations that cannot practically be performed in the human mind.” Previously, the “practically” requirement has often been ignored. The Memo even pointed out that many aspects of AI “cannot be practically performed in the human mind” and therefore “do not fall within this [mental process] grouping.”

If the USPTO and the examiners take this Memo seriously, we may finally get some reprieve from excessive and inconsistent rejections for subject matter eligibility. Perhaps the USPTO will lock the 101 Grim Reaper outside.

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