With the recent swearing-in of John A. Squires as Director of the United States Patent and Trademark Office (“USPTO”), practitioners should pay close attention to his very first substantive decision — not only as a matter of domestic U.S. law, but because of the ripple-effects such signals may send to global IP strategy (including Asia and Europe). Director Squires’ early move strongly suggests a recalibration of how patent subject-matter eligibility under 35 U.S.C. § 101 will be treated in emerging technology fields (notably AI, diagnostics, crypto).
This article analyzes that decision and sets out key takeaways for counsel advising on U.S.-oriented patenting intentions. In Part 2, we’ll explore the strategic implications for global patent portfolio management.
The Desjardins Decision and Its Significance
In his early tenure, Director Squires vacated a decision by the Patent Trial and Appeal Board (PTAB) that had rejected an AI-related patent application under § 101. The case represents a meaningful departure from previous USPTO approaches to emerging technology patents, signaling a more innovation-friendly environment for technological improvements.
In the case of Ex Parte Desjardins et al. (Appeal 2024-000567), the PTAB panel deemed the claims directed to an abstract mathematical concept (i.e., machine-learning model training) and thus ineligible under the “Alice” / abstract-idea regime. Director Squires found that to be a flawed analysis. While the claims were directed to a mathematical idea at Step 2A Prong One, the claims as a whole recited a technological improvement to how the model was trained (e.g., memory savings, reduced system complexity) under Step 2A Prong Two.
Analogizing to Enfish and Technical Improvements
Director Squires analogized the technology to the Federal Circuit precedential decision of Enfish, LLC v. Microsoft Corp., holding that such a technical improvement can support eligibility. This comparison is particularly significant because Enfish established that improvements to computer technology itself can overcome abstract idea rejections, even when mathematical concepts are involved.
Importantly, Director Squires proclaimed that §§ 102, 103 and 112 remain the principal statutory levers for restricting scope, and that § 101 should not be used as a blunt instrument to exclude entire fields of applied technology.
Understanding the Two-Step Framework
The decision reinforces the importance of properly applying the Alice/Mayo two-step framework for Section 101 analysis. At Step 2A Prong One, examiners determine whether claims are directed to an abstract idea, law of nature, or natural phenomenon. However, Step 2A Prong Two asks whether the claims recite additional elements that integrate the judicial exception into a practical application.
Director Squires’ decision emphasizes that technological improvements—even those involving mathematical algorithms—can constitute practical applications that render claims patent-eligible. This represents a crucial refinement of how the USPTO applies eligibility analysis to emerging technologies.
Policy Implications for Innovation
The decision reflects a broader policy stance that Section 101 should not serve as the primary gatekeeper for patent quality. By emphasizing that sections 102 (novelty), 103 (non-obviousness), and 112 (enablement and written description) provide more appropriate tools for evaluating patent scope and validity, Director Squires signals a desire to prevent categorical exclusion of entire technology fields.
This approach aligns with longstanding concerns from the innovation community that overly restrictive Section 101 interpretations were hindering technological advancement, particularly in software-implemented inventions and AI applications. The decision suggests the USPTO will take a more balanced approach that encourages innovation while maintaining appropriate quality standards through other statutory provisions.
What This Means for Pending Applications
For patent applicants with pending applications involving AI, machine learning, or other software-implemented technologies, this decision provides valuable guidance on how to position claims for allowance. The key is demonstrating that claimed inventions provide technical improvements to computing systems, not merely automating abstract processes or implementing generic computer functionality.
Practitioners should review pending applications to identify opportunities for amendments or arguments that highlight technical improvements in system performance, efficiency, resource utilization, or functionality. These technical advantages should be clearly articulated in both claims and specifications to align with the framework Director Squires has endorsed.
Continue reading: Director Squires’ Section 101 Decision: Strategic Implications for Global Patent Strategy (Part 2)
Need help navigating Section 101 eligibility for your innovations? We advise companies on patent strategy for AI, blockchain, diagnostics and emerging technologies across global markets. Contact our intellectual property experts at CrossBorder IP to discuss how recent USPTO policy shifts affect your patent portfolio strategy.