[IP Practice Online] Explanation of Patent Eligibility Issues in the United States and Practical Responses in Patent Prosecution (Japanese and U.S. Patent Attorney Shigeki Takeuchi)
更新日：1 日前
Article information
Article type: Lectures and videos
Category: United States
Topics: Claim interpretation, Patent eligibility
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2025-12-09 (Japan time). Full English translation.
[IP Practice Online] Explanation of Patent Eligibility Issues in the United States and Practical Responses in Patent Prosecution (Japanese and U.S. Patent Attorney Shigeki Takeuchi)
<1> Basic principles and case law
The current framework for assessing eligibility is the “Alice test,” based on Supreme Court case law.
<2> USPTO (United States Patent and Trademark Office) examination guidelines
Examiners conduct examination based on the Alice test while using their own flowchart (Steps 2A and 2B).
The general rule for examiners' claim construction is the “broadest reasonable interpretation” (BRI).
To establish eligibility, it is necessary not merely to use these exceptions, but to integrate them into a “practical application.” It is important to argue “improvement to computer functionality” or “improvement to other technology” as evidence of that integration.
<3> Practical responses
From the Japanese filing stage, it is recommended that the specification describe in detail the technical field, the technical problems specific to that field, and the technical effects that solve those problems.
For AI-related inventions in particular, it is important to specify field-specific data and inputs and outputs, and the resulting improvement in the system's functionality, rather than a general-purpose model.
In drafting claims, it is necessary to avoid “results-based functional expressions” (for example, “analyzing” or “displaying”) and to describe specific hardware configurations or processing steps.
Translator’s notes (editorial)
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