The USPTO continues to refine how practitioners can effectively address subject matter eligibility under §101. The latest guidance on Rule 132 Subject Matter Eligibility Declarations (SMEDs) is worth close attention. The memo emphasizes the growing importance of real-world, evidence-based submissions in a SMED that clearly demonstrate how a claimed invention improves technology. Practitioners are encouraged to treat SMEDs as a powerful tool to bridge the gap between abstract claim language and tangible innovation, helping examiners better understand practical application and technical improvement.
Takeaway: Clarity and focus matter. The memo also reinforces that SMEDs should not supplement the specification but instead provide objective insight into how a person of ordinary skill would interpret the invention’s technological improvements. Further, the USPTO strongly suggests submitting SMEDs as separate declarations, rather than combining them with other Rule 132 evidence (e.g., obviousness or secondary considerations). This approach reduces confusion, strengthens the evidentiary record, and ensures a clear nexus between the claimed invention and the supporting evidence.
Practice Tip: Attorneys at Guntin & Gust cite Desjardins from the MPEP to overcome subject matter eligibility rejections under §101 and have had some success. However, we are now contemplating incorporating SMED into our practice for more challenging cases. This would require coordinating with clients and their inventor corps to draft an SMED.
Read USPTO Memo: https://www.uspto.gov/subscription-center/2025/uspto-issues-new-guidance-subject-matter-eligibility-declarations