Can You Now Patent AI Inventions Under Section 101?

For years the safe move was to abandon a borderline AI invention rather than fight a Section 101 rejection, and as of this fall that math has changed.

In art units that took a hard line on eligibility, arguing a borderline machine learning invention past an abstract idea rejection cost more than the invention looked worth, so applicants shelved it and spent the budget on filings with better odds.

That changed with Ex parte Desjardins, a precedential Appeals Review Panel decision. A DeepMind method for training machine learning models to reduce catastrophic forgetting cleared Section 101, with the panel finding that the claims put the underlying math to work as a specific improvement to how the model trains. The panel moved novelty, nonobviousness, and claim scope back under Sections 102, 103, and 112 instead of folding them into the eligibility question the way so many AI rejections have. That gives you an examiner who has to meet the claims on the merits of the art rather than waving the invention off as abstract at the threshold. It binds both examiners and the PTAB, so the examiner handling your application has to apply it.

The Desjardins decision came down in 2025. The shift became real this fall as the office built around it: updated examiner guidance, targeted software and AI examiner training, and an internal Section 101 working group, all pointing examiners toward the approach the panel laid out. Eligibility rejections now rest on a preponderance of the evidence, so a genuine 50/50 call goes the applicant's way, while any rejection the examiner can still carry stays in place.

Section 101 is not solved. The change reaches the examiner's desk, not the courtroom. A patent that issues over an eligibility rejection carries the same litigation risk it always did, so the prosecution record you build now is the one you will rely on if eligibility is challenged in court.

More disclosures now survive Section 101, and more of them compete for the same prosecution budget. The triage over which inventions earn a filing slot comes up far more often.

Running that triage the same way across a growing stack of disclosures takes a clear view of each one in a single place. ArcPrime's Prior Art Search gives you the art picture for a disclosure. Patent Examiner Analytics shows how the examiner likely to see these claims tends to treat them, and its portfolio and continuation analysis places a new filing against the family you already hold. With all three in front of you, ranking a batch against the budget goes quickly and lands the same way each time.

Once you pick an invention, the examiner now looks for a record that shows the technological improvement clearly, and most of that record lives in the specification. You also have a newer option: a Voluntary Subject Matter Eligibility Declaration under 37 CFR 1.132, sworn objective evidence that a skilled reader would read your specification as describing a technological improvement. You can file it before the first Office action rather than waiting for a rejection. The office reports early success with these declarations, though the success is self-reported and the sample is still small.

The declaration and a strong specification rest on the same thing: a technical improvement shown against the prior art. ArcPrime's Prior Art Search surfaces the closest art so you can frame the improvement against it precisely, and its Patent Drafting Assistant helps you build the specification and the supporting technical record a declaration draws on.

As filing volume climbs, consistency gets harder: triaging every disclosure by the same measure, holding every specification to the same standard, whether you run a two-person team or a full IP department. That stays manageable when the prior art picture, the examiner signal, the drafting, and the portfolio view sit in one place rather than scattered across separate tools you reconcile by hand. ArcPrime runs on a single platform for that reason. Every patent decision. Powered by one platform.

On September 29, Director Squires told Congress to file AI applications and stop abandoning them. Teams that turn the opening into a repeatable filing process will get the most from it, and that process still has to hold up when an application reaches court. You can watch the triage and record-building run on a live docket at arcprime.com/demo.