The USPTO has announced an upcoming revision to the Manual of Patent Examining Procedure (MPEP) prompted by the Appeals Review Panel’s precedential decision in Ex Parte Desjardins. Issued in September 2025, Desjardins reinforces how examiners should evaluate patent eligibility for software, machine learning, and AI-related claims under 35 U.S.C. § 101.
The memo emphasizes that Desjardins does not introduce new USPTO policy. Instead, it clarifies how existing frameworks—particularly Enfish and McRO—apply when claims involve algorithmic or machine-learning concepts. The central takeaway is that software can be patent-eligible when the specification and claims reflect a concrete technological improvement.
In Desjardins, the invention involved training a machine learning model across multiple tasks while preventing “catastrophic forgetting,” a well-known technical problem in continual learning systems. The ARP agreed the claims recited a mathematical concept but held that the specification disclosed meaningful technological improvements, including reduced storage needs, lower system complexity, and improved retention of earlier learned tasks. Because the claims incorporated the steps responsible for those improvements, the Panel found that the invention integrated the abstract idea into a practical application.
The MPEP, which guides patent examiners heavily in their work, will instruct examiners to look for these kinds of concrete improvements when assessing AI-related claims. Examiners are reminded to evaluate the specification for detailed explanations of the technological advance, avoid oversimplifying claim language, and ensure the claims themselves reflect the disclosed improvement. The memo also adds new examples to the MPEP recognizing improved machine-learning training methods as potential technological enhancements.
These changes take effect immediately and will be incorporated into the next MPEP revision. For applicants working in AI, continual learning, or data-driven software architectures, the memo underscores the importance of describing in full detail how the invention improves the functioning of a computer system or technical field, rather than presenting high-level goals or generic benefits.
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