In a recent IPWatchdog article, Thompson Coburn partner Ben Volk shared his outlook on intellectual property trends for the year ahead.
“I expect 2026 to provide interesting developments in 35 USC 101 doctrine for inventions that address artificial intelligence (AI) and machine learning (ML), particularly with respect to how the USPTO will examine patent applications focusing on AI/ML inventions,” said Ben.
He highlighted the contrasting approaches to AI between the courts and the USPTO. “In 2025, the courts appear to have adopted an AI-skeptical approach to patent-eligibility (see Recentive Analytics, Inc. v. Fox Corp. (Fed Cir. 2025)), whereas the USPTO has adopted an AI-optimistic approach to patent-eligibility (see Ex Parte Desjardins (PTAB 2025) and public statements by Director Squires). To address this potential rift, the USPTO will likely issue additional guidance on patent-eligibility for AI/ML inventions,” Ben said.
“The USPTO’s recent memorandum regarding the use of declarations by applicants to establish subject matter eligibility is a helpful start, and I foresee new guidance from the USPTO in 2026 on topics such as (1) where the burden of proof falls with respect to examiner allegations that a claimed AI/ML technique is merely an already ‘established method’ for AI/ML as per Recentive Analytics (and thus an indicator of patent-ineligibility) and (2) the proper role for the specification when assessing whether a claimed AI/ML technique can be characterized as a ‘practical application’ or ‘something more’ for purposes of patent-eligibility,” he said.
Read the full article here.
