Patenting AI Inventions in 2026: Drafting for Section 101 Eligibility and Using AI Tools to Do It

Ryan N. Phelan, Partner | Marshall, Gerstein & Borun LLP

Ryan N. Phelan is a registered U.S. patent attorney whose practice centers on artificial intelligence (AI) and machine learning, computer engineering, computer science, and software inventions, with related work in quantum computing, fintech and exchange platforms, robotics, and digital healthcare, medtech, and software-based medical platforms. He has personally prepared and prosecuted hundreds of patent applications in the United States and abroad, including Europe, China, and Japan, for clients ranging from startups to Fortune 500 companies. An early adopter of AI tools in patent practice, he integrates AI legal tools into drafting and prosecution workflows with attorney review at the center, moving inventions from disclosure to inventor-ready drafts more efficiently. He also teaches Patenting Software Inventions as an adjunct professor at Northwestern University’s Pritzker School of Law, with a focus on patent eligibility under 35 U.S.C. § 101. His technical grounding comes from a computer science degree, prior work as an Accenture capital markets technology consultant and software developer, and an MBA from Northwestern’s Kellogg School of Management.

• Education & Credentials

Ryan earned his J.D., cum laude, from Northwestern University School of Law concurrently with an MBA from the Kellogg School of Management, serving as an Executive Editor of the Northwestern Journal of Technology and Intellectual Property. He holds a B.S., magna cum laude, in computer science from the University of Louisiana-Lafayette, where he was president of the school’s Association of Computing Machinery chapter, and he is a Certified Java Programmer. His hands-on technical experience spans AI platforms and models including ChatGPT, Claude, Grok, and Gemini; machine learning frameworks including TensorFlow and PyTorch; and languages such as Python, R, Java, C#/.NET, C++/C, and JavaScript.

He is admitted in Illinois, before the U.S. Patent and Trademark Office, the U.S. District Courts for the Northern District of Illinois, the Eastern District of Texas, and the Western District of Wisconsin, and the U.S. Supreme Court.

• Recognition & Leadership

Ryan writes and speaks regularly on patent strategy for AI and software. His recent commentary in IPO Daily News covers the Federal Circuit’s finding that AI-based dental monitoring claims are ineligible under Section 101 (September 14, 2026), Federal Circuit guidance for drafting AI patent claims (September 2, 2026), and WIPO’s report that generative AI patent activity nearly tripled in two years (September 1, 2026); his article on patenting strategies for AI in the autonomous vehicle space appeared in IP Litigator on July 15, 2026. He moderates PatentNext, a blog on patent and IP law for next-generation technologies launched in March 2021, and was named a Mondaq Thought Leader for Intellectual Property, United States, in the Autumn 2021 awards for that work. His writing has also appeared in World Intellectual Property Review and Bloomberg Law, and he has served as a panelist for the International Intellectual Property Law Association and the University of Illinois Chicago Annual IP Conference.

His professional recognition includes IAM Strategy 300 and IAM Strategy 300 Global Leaders, selection to The Best Lawyers in America in Patent Law since 2024, the Illinois Super Lawyers list since 2023, and Leading Lawyers honors since 2021, following Super Lawyers Rising Star and Leading Lawyers Emerging Lawyer recognition in 2019 and 2020.

• Professional Involvement

Within Intellectual Property Owners (IPO), Ryan chairs the Software Medical Devices Subcommittee and serves on the AI & Other Emerging Technologies Committee and the Software Related Inventions Committee. He is a member of the American Intellectual Property Law Association and the Intellectual Property Law Association of Chicago, serves as Secretary of the China National Intellectual Property Administration (CNIPA)/U.S. Liaison Council, and provides pro bono representation through Lawyers for the Creative Arts.

• Experience

Ryan’s AI-assisted drafting practice uses product and portfolio information across related applications to promote consistent terminology and fuller descriptions of inventions, develop specifications with support for broader coverage, fallback positions, and future continuations, and articulate the technical improvements relevant to software patent eligibility. Tool selection and use are built around encryption, matter-level data segregation, controlled access, and protections against using client information to train AI models, with attorney review of every AI-generated output for accuracy and unsupported statements before it enters work product.

His prosecution work covers agentic AI, large language models, and machine learning; software as a medical device and software in a medical device; robotics and self-driving vehicles; cloud and client-server architectures; blockchain and cryptocurrency; security, cryptography, and encryption; and financial services and insurance innovations, among other fields. He also prepares patentability, non-infringement, validity, and freedom-to-operate opinions, and his litigation experience informs how he drafts claims with later assertion and challenge in mind.

Ryan represents clients in U.S. district courts including the Northern District of California, the Eastern District of Texas, and the Northern District of Illinois, before the Patent Trial and Appeal Board, and at the U.S. International Trade Commission. Representative results include a non-infringement jury verdict for Apple in ContentGuard Holdings, Inc. v. Apple, Inc. (E.D. Tex.), a General Exclusion Order for PopSockets in Certain Collapsible Sockets for Mobile Electronic Devices (USITC 337-TA-1056), a non-infringement jury verdict as trial counsel for Extreme Networks in Extreme Networks, Inc. v. Enterasys Networks, Inc. (W.D. Wis.), and institution on all grounds of inter partes review petitions filed for Old Republic General Insurance Group.

SESSION 1 – Drafting AI Patent Claims That Survive Section 101 After the 2026 Federal Circuit Decisions | Ryan N. Phelan | 2:30pm – 3:30pm

The Federal Circuit’s recent AI eligibility decisions, including Recentive Analytics v. Fox and Dental Monitoring SAS v. Align Technology, confirm that applying machine learning to a specialized field with a domain-specific dataset is not enough. This session walks through where the eligibility line now sits, how the USPTO is applying its AI guidance (including precedential designated cases such as Ex parte Desjardins), and the claim- and specification-drafting techniques that keep AI applications on the right side of it.

BREAK | 3:30pm – 3:40pm

SESSION 2 – Drafting Patents with AI: A Practitioner’s Workflow for Eligibility-Ready Applications | Ryan N. Phelan | 3:40pm – 4:40pm

Artificial intelligence (AI) is transforming how patent attorneys prepare and prosecute patent applications, creating opportunities to improve drafting quality, increase efficiency, and reduce costs. This session will explore practical strategies for incorporating AI tools into patent preparation workflows while maintaining attorney oversight and professional responsibility. Using Solve Intelligence as an example, the presentation will demonstrate a structured, attorney-led methodology that emphasizes effective preparation of invention disclosures, claims, drawings, and reference labels; grounding AI outputs in reliable technical information; and iteratively drafting and reviewing patent specifications.

The session will also address how AI-assisted drafting can strengthen patent applications under Sections 101 and 112, support prosecution and continuation strategies, and facilitate the reuse of product and company information across patent portfolios. Additional topics include AI limitations and hallucinations, human inventorship, client collaboration, confidentiality, data security, and opportunities to deliver greater value through more efficient patent preparation. The session is designed for patent practitioners, including outside counsel, in-house counsel managing patent portfolios, and IP teams seeking to integrate AI into their practices.