AI IP Year in Review – Patent Protection for AI Technologies: Navigating § 101 After Recentive Analytics

As companies lean into AI innovation to revolutionize a wide range of industries, they will encounter opportunities to secure patents on their advances. This article provides a practical roadmap to securing valid, enforceable patents and avoiding prosecution pitfalls in the evolving AI patent landscape.

The most authoritative guidance from the Federal Circuit on AI patentability under § 101 comes from Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025). The court affirmed that AI-based patents are subject to the two-step framework from Alice Corp. v. CLS Bank International (2014). The USPTO’s published guidance also underscores that many AI claims will implicate abstract ideas that may require deeper scrutiny under Step 2 of the Alice/Mayo framework. The guidance instructs examiners to look for features that confine or transform the recited abstract idea into a particular technological environment.

This direction given by the Federal Circuit and the USPTO can guide practitioners in drafting strong claims for their AI inventions.

Build a Compelling Technical Narrative

The patent should have a narrative, beginning with the specification and flowing through the claims, that ties together the technical problem, the inventive mechanism, and the measurable improvement.

• Define a Concrete Technical Problem. A strong patent application identifies a specific technical limitation in the prior art.
• Describe the Technological Solution in Detail. The specification should disclose how the invention changes the computational landscape through architecture, process, or resource optimization techniques.

Several recurring errors continue to derail AI patent applications:

• Avoid Concessions of Conventionality – Counsel should probe for the non-obvious components (e.g., architectural changes to the AI model, the feature extraction method, or algorithmic optimization technique) that differentiate the invention from a generic application of AI.
• Overly Abstract Functional Language – Claims written at a high functional level without linking operations to technical context invite § 101 rejections.
• Outcome-Focused Drafting and Overreliance on Performance Metrics – A related error is claiming an invention by its end result rather than its technological mechanism.
• Disconnected Claims and Specification – A lack of narrative continuity between the specification and claims weakens the patent’s technical foundation outline.

Takeaways

• Courts and the USPTO demand specificity, substance, and a demonstrable link between algorithmic techniques and technological advancement.
• For legal practitioners, success depends on technical storytelling as much as legal drafting.
• Practitioners should consider trade secrets, copyright, and contracts/NDAs to protect other aspects of AI technology.

Read the full article, Turning AI Innovation into Patent Protection: Key Considerations, which first appeared in Westlaw Today.

This article appeared in the 2025 AI Intellectual Property: Analysis & Trends Year in Review report.