On April 30, 2026, USPTO Director John Squires issued an updated memorandum (April SMED update) regarding Subject Matter Eligibility Declarations (SMEDs). This new guidance supersedes the previous December 4, 2025 memorandum (Dec SMED Memo). Key takeaways from the update include:
- A living document: The USPTO will treat the Dec SMED Memo for practitioners and applicants as a living document that is periodically updated based on feedback and data.
- Separation of filings: The Director strongly recommends filing SMEDs addressing subject matter eligibility (SME) issues separately from declarations related to other statutory rejections.
- Evidentiary weight of SMEDs: The USPTO is currently reviewing technical suggestions from practitioners regarding how much weight to be given to opinion evidence in SMEDs, with further updates expected.
Since the issuance of the Dec SMED Memo, the United States Patent and Trademark Office (USPTO) has collected data on SMED utilization as well as feedback from practitioners and the general public. However, the Dec SMED Memo did not provide best practice guidance in detail. The USPTO issued the April SMED update to clarify best practices in response to the information it has gathered since the release of the Dec SMED Memo.
In the SMED Memo, the Director characterizes SMEDs as being “intended to provide a ‘window’ as to how a person or ordinary skill in the art would interpret the specification as to the practical application of the invention claimed.” The guidance generally reflects on the best way to present this “window” to an Examiner.
Notably, the best practice highlighted by the April SMED update, makes it clear that while “it is permissible to file a single declaration under 37 CFR 1.132 addressing rejections under multiple statutory requirements, applicants are encouraged to submit a separate SMED to address subject matter eligibility”. That is, the guidance emphasizes that SMED filings should be separated from other declarations directed to other statutory rejections to reduce confusion and intertwining of SME with other types of issues.
This best practice is also generally reflective of how the USPTO Manual of Patent Examining Procedure (MPEP) treats SME (addressed under MPEP 2106) separately to obviousness (addressed under MPEP 2145) and is noted as supporting Examiner practice by simplifying Examiner analysis of submitted evidence. Separate SMED filings also conform to USPTO training materials and other job aids that treat SMEDs and declarations for obviousness as distinct.
To drive the point home, the April SMED update cites Federal Circuit Case Law in support of the use of focused and specific declarations. For example, in In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992), the U.S. Court of Appeals for the Federal Circuit (CAFC) held that the burden of proof shifts based on the type of rejection and that evidence submitted must be relevant to the specific issue, reinforcing the need for discrete, clear, focused evidentiary records. In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007) is also cited for the holding that the Patent Trial and Appeal Board (PTAB) must consider all evidence including multiple declarations and may not disregard any because they address different aspects of patentability.
To conclude, the Director emphasizes that “Submitting separate declarations for SME and obviousness is a best practice” which helps avoid confusion and improve clarity in prosecution. By following this best practice, each submitted declaration “is discretely focused on the specific rejection being traversed”.
In summary, the USPTO is actively encouraging the use of SMEDs when SME is at issue. Accordingly, for Applicants and practitioners, the best practice moving forward is to provide a separate SMED from other declarations provided.
The USPTO will provide further updates to the evidentiary weight to be given to SMEDs in light of practitioner feedback, which we will be watching for. If you have questions about Director Squires’ memorandum regarding SMEDs, please contact your Dinsmore intellectual property attorney.