Subject Matter Eligibility Declarations (SMEDs) to Overcome Eligibility Rejections

"The USPTO has issued new guidance on using Rule 132 declarations to address subject matter eligibility rejections. The two memoranda, signed by Director John A. Squires on December 4, 2025, provide a new roadmap for how applicants can submit evidentiary declarations to overcome § 101 rejections. One memorandum is directed to the Patent Examining Corps, explaining how examiners should evaluate these submissions."

"The SMED guidance arrives as part of Director Squires's broader effort to address what he has characterized as "conflicting (and confusing) questions about patent subject matter eligibility." In his view, Examination and Eligibility are two distinct issues that should be separated. On his first day in office, Squires signed two patents in technical fields that have frequently faced eligibility challenges: distributed ledger/crypto technologies and medical diagnostics."

"Three days later, he issued the In re Desjardins Appeals Review Panel decision, Appeal No. 2024-000567 (PTAB Sept. 26, 2025), vacating a PTAB sua sponte § 101 rejection of claims directed to training machine learning models while preserving prior tasks. That decision, which Squires designated as precedential on November 4, 2025, warned against overbroad eligibility rejections and emphasized that improvements in "computational performance, learning, storage, data sets and structures" can constitute patent-eligible technological advancements under the Alice framework."

Two memoranda signed December 4, 2025 by USPTO Director John A. Squires explain how applicants can use Rule 132 declarations—now called Subject Matter Eligibility Declarations (SMEDs)—to submit evidence addressing §101 rejections. One memorandum instructs the Patent Examining Corps on evaluating such submissions; the other advises applicants and practitioners on preparing SMEDs. The memoranda do not create new procedures but emphasize an underutilized avenue under 37 C.F.R. § 1.132 for submitting eligibility evidence. The guidance follows precedential PTAB action in In re Desjardins and aligns with efforts to separate examination from eligibility and to recognize technological improvements as potentially patent-eligible.

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