Estimated reading time: 6 minutes
Summary
On December 4, 2025, the new USPTO Director John Squires issued guidance that serves as a potential game changer for software and AI patents facing “abstract idea” rejections. This post analyzes the new “SMED” (Subject Matter Eligibility Declaration) memos and explains how submitting factual evidence can overcome difficult Section 101 hurdles. We explore specific examples regarding AI and mental processes, detailing how to utilize this underused strategy to secure your intellectual property.
Key Takeaways
- The new USPTO guidance on Subject Matter Eligibility dramatically changes how software and AI patents are assessed, focusing on factual evidence instead of attorney arguments.
- Submitting a Subject Matter Eligibility Declaration (SMED) can effectively address Section 101 rejections by providing concrete facts about the invention.
- The precedential ruling in ‘In re Desjardins’ supports AI patenting by redefining acceptable applications beyond mere abstract ideas.
- Inventors must keep evidence about eligibility and non-obviousness separate to maintain a clear record during patent prosecution.
- This shift emphasizes the importance of technical data and evidence to demonstrate eligibility, creating more opportunities for high-tech patent approvals.
Table of contents
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“SMED” Memos: A Game Changer for Software & AI Patents
If you have filed a patent application in the last ten years, specifically for medical diagnostics, software, or AI, you likely know the frustration of the “Section 101” rejection.
This is the moment the examiner tells you that your brilliant innovation is nothing more than an “abstract idea,” a “mental process,” or “mathematical concepts.” For years, this has been the death knell for countless high-tech patent applications.
However, the landscape changed yesterday.
On December 4, 2025, the new Director of the USPTO, John Squires, issued two massive memos. These documents represent the most significant shift in patent prosecution strategy we have seen in years.
I have spent over 25 years as a patent attorney helping clients navigate the complexities of computer and software-related inventions. Today, I want to break down exactly what a “SMED” is, why the USPTO is practically begging us to use them, and the specific rules you must follow to succeed.
A New Era at the Patent Office
Context matters in patent law. Director Squires did not waste time setting a new tone. On his very first day, he explicitly signed two patents into issuance. One was for distributed ledger technology (crypto), and the other was for medical diagnostics.
This was a clear signal.
He also designated a new decision, In re Desjardins, as precedential. This case is vital for anyone innovating in Artificial Intelligence. The decision essentially states that if you train a machine learning model to perform multiple tasks without “catastrophic forgetting,” that is a practical application. It is not just math.
This decision laid the groundwork for the memos released yesterday. The Director has handed us a new tool: the Subject Matter Eligibility Declaration, or SMED.
What is a SMED?
Technically, a SMED is a declaration filed under 37 CFR 1.132.
In standard patent prosecution, when an examiner rejects a claim as ineligible, your attorney writes a response. We argue legal precedent and try to persuade the examiner that their logic is flawed.
But ultimately, that is just attorney argument. Examiners are free to disagree with opinions.
A SMED is different. It is evidence.
It is a sworn statement, usually signed by the inventor or a qualified expert, that establishes facts. The Director’s memo to the Examining Corps explicitly describes this as an “underutilized path.”
The Director is effectively inviting applicants to stop arguing and start proving. He wants us to prove eligibility with hard facts.
Breaking Down the “Mental Process” Rejection
The memo provides fantastic examples of when a SMED can save a patent application. One of the most common hurdles for software patents is the “Mental Process” rejection.
This occurs when an examiner claims your software is performing steps that a human could simply do in their head or with a pen and paper.
Imagine you have invented a complex network security system. The examiner might reject it, claiming it is an abstract idea of “organizing data.”
Under the new guidance, you can file a SMED. You can have an expert testify to the following:
- The process occurs on multiple machines simultaneously.
- The volume of data processing is beyond human capacity.
- A human mind literally cannot perform these distributed processes.
This update is a massive game changer for software and AI patents.
This testimony moves the discussion from a subjective opinion on “abstraction” to a concrete fact regarding technical limitations.
Proving the Case for AI and Neural Networks
If you have an AI invention, examiners often default to calling it “abstract math.” Now, we can fight back with data.
You can submit a SMED that includes comparative testing results. You can show data proving that your new architecture achieves specific technical goals, such as:
- Superior performance speeds.
- Lower storage requirements compared to legacy systems.
- Reduced power consumption.
Demonstrating a specific “improvement to the functioning of a computer” is the golden ticket for Subject Matter Eligibility. The USPTO is telling us that technical data is the best way to prove that improvement.
The Computer Animation Example
The memos also addressed the automation of creative tasks.
Suppose you are automating a task that animators previously performed by hand. An examiner might argue that you are simply automating a human activity, which is generally ineligible.
You can now submit a SMED showing the nuance of the invention, testifying that while the goal is the same, the method is distinct. You can provide evidence that the task was previously subjective and prone to human error, but your specific rules allow a computer to automate it objectively.
The “Nexus” Requirement
There is one critical constraint you must respect. The evidence you provide must have a “nexus” to what you claimed.
You cannot use the declaration to add new matter to your patent application, or add new features with the declaration that aren’t in the original filing.
You are using the declaration to explain how a “person of skill in the art” would interpret what you already filed. The declaration clarifies the technical reality of the invention as it existed when you filed it.
New Procedural Rule: Do Not Mix Arguments
The Director issued a second memo specifically for Applicants and Practitioners. It outlines one major best practice that we must follow.
Do not mix your arguments.
In the past, we often filed declarations to prove an invention was not obvious (Section 103). For example, we might file a declaration showing the product was a commercial success to overcome an obviousness rejection.
The USPTO is now warning us: Do not put your Subject Matter Eligibility evidence in the same document as your Obviousness evidence.
The legal standards for Section 101 (Eligibility) and Section 103 (Obviousness) are entirely different. Combining them confuses the record. Director Squires wants a “clean record.” He wants the examiner to focus purely on the eligibility facts without getting muddied by other patentability issues.
If you are fighting on two fronts, you must file two separate declarations.
Conclusion
The USPTO is signaling a clear willingness to grant more software and high-tech patents. However, there is a catch. You must provide them with the evidentiary ammunition they need to justify the grant.
This shift from argument to evidence is a positive development for innovators. It provides a structured, factual way to overcome vague rejections.
If you have a pending application that is stuck in a Section 101 rejection, or if you are preparing to file a new software specification, ask your patent attorney: “Is this a good candidate for a SMED?”
I will be tracking Director Squires’ next moves closely to keep you informed.
If you want to read the source material directly, the USPTO subject matter eligibility and guidance in the MPEP official memos are linked below:
MPEP Memo (December 5, 2025): Advance notice of change to the MPEP in light of Ex Parte Desjardins
Memo #1 (December 4, 2025): Subject Matter Eligibility Declarations
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