USPTO Highlights Underused Path for Subject Matter Eligibility Evidence

On December 4, 2025, Director John Squires of the United States Patent and Trademark Office (USPTO) issued a memorandum regarding Subject Matter Eligibility Declarations (SMEDs). The memo touched on several key points including:

• It being  “issued to raise Examiner awareness” about the existing option for Applicants to submit a SMED under 37 CFR 1.132, an underutilized path to proffer evidence to establish subject matter eligibility (SME) of the claimed invention.
• An Examiner must explain, based on all evidence of record including the SMED, why a SME rejection is maintained or overcome. 
• Any person who has knowledge of the facts being asserted in the SMED may sign the declaration (e.g., an inventor, an inventor's co-worker, an independent expert or others). No special qualification other than knowledge of the facts is required.
• Applicants are not required to submit a SMED in an application, and Applicants cannot be penalized for not submitting a SMED.

A SMED may demonstrate how one of ordinary skill in the art would interpret a specification that describes a technological improvement to show that the claimed invention is patent-eligible subject matter. To be of probative value, any objective evidence should be supported by actual proof.

The SMED cannot be used to supply information that was required to be present in the original disclosure upon filing.

A SMED opinion as to the legal conclusion itself (i.e., eligibility or ineligibility) is not entitled to any weight. However, the underlying factual basis for the SMED opinion may be persuasive.

The Examiner must consider the SMED on the merits when the Examiner determines that the SMED meets the formal requirements (i.e., timeliness, proper signature, willful false statements clause, etc.).  However, the SMED evidence alone does not necessarily control the eligibility determination.

If the SME rejection is maintained in the next Office action, the Examiner must explain, based on all evidence of record including the declaration, why it has not been overcome. If the SME rejection is withdrawn in the next Office action, the Examiner must explain, based on all evidence of record, including the declaration, why it has been overcome.

As is always the case, an Examiner’s remarks on the record can impact litigation proceedings.

Helpful examples of scenarios in which SMEDs can be implemented are included in the guidance, particularly for:

• mental processes and improvements relating to computer science, and
• abstract ideas and additional elements amounting to significantly more relating to prophylaxis treatment, and
• organization of human activity and additional elements amounting to significantly more relating to filtering of internet content.

If you have questions about Director Squires’ memorandum regarding SMEDs, please contact your Dinsmore intellectual property attorney.