Following Squires memo, Desjardins decision, USPTO pushes broad approach to eligibility

Following Squires memo, Desjardins decision, USPTO pushes broad approach to eligibility

Squires reportedly said, “When technology rewires how information flows, that’s when invention begins.”

The latest USPTO hour focused on patent eligibility updates a day after Director John Squires designated as precedential a September 26, 2025, decision that defends eligibility for artificial intelligence (AI) inventions.

Squires’ recent remarks at the American Intellectual Property Law Association (AIPLA) - where he told attendees that there is no need to overhaul patent law to protect AI as proper application of existing laws is adequate to secure patent rights for future technologies – mentioned the Appeals Review Panel (ARP) decision in ex parte Desjardins, Appeal 2024- 000567 (Decided September 26, 2025) Squires reportedly said, “Eligibility follows architecture,” and explained that when it comes to eligibility analyses, the Office will be looking for “the something more that Alice and Mayo tell us to look for”

Squires reportedly said, “When technology rewires how information flows, that’s when invention begins.”

Pointing to Desjardins, and the first patents he signed—that were directed to distributed ledger/crypto and medical diagnostics technologies—as evidence that the Office is committed to ensuring that transformative technologies remain eligible.

Squires vacated the Board’s decision and found the claims at issue eligible, in Desjardins, in part highlighting the US Court of Appeals for the Federal Circuit’s (CAFC’s) decision in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337–38 (Fed. Cir. 2016) as educational.

Squires reportedly explained, “The Enfish decision, which holds as patent eligible improvements to computer data structures. DL, if nothing else, is the ultimate data structure—and a technology that’s been around for more than 15 years. And re-engineering is therefore new uses under 100(b). And AI, claimed and supported correctly, is merely the other side of the Enfish coin.”

“In ex parte Desjardins, the claim related to improvements to machine learning models to ‘effectively learn new tasks in succession whilst protecting knowledge about previous tasks’”. But this had been abstracted out of existence sua sponte by the Desjardins Board—trying to do the right thing, mind you. And I am by no means picking on them whatsoever. The guidance simply hasn’t been there. But believe me it will be shortly. Eligibility simply can’t be relegated to the eyes of the beholder. And it will not be on my watch.”

While the Desjardin panel vacated the Board’s eligibility holding, it added, “At the same time, the claims at issue stand rejected under § 103. This case demonstrates that §$ 102, 102 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope”. The panel further said that those statutory provisions “should be the focus of examination.”

Presentations by Charles Kim, Deputy Commissioner for Patents; Michael Kim, Vice Chief Administrative Patent Judge, Patent Trial and Appeal Board; and Carolyn Kosowski, Senior Legal Advisor, Office of Patent Legal Administration were featured in the USPTO Hour.

Questions submitted by attendees, including one about whether the Office will work to improve consistency in eligibility decisions among the examining corp, were addressed by the panel. Doing so is a challenge in an agency as big as USPTO, Charles Kim admitted but noted that the reminder memo issued by Squires at the beginning of August was part of a broader effort to improve patent quality by identifying outlier trends, which included looking at tech centres with both unusually low and unusually high allowance rates.