The USPTO issued two December 4, 2025 memoranda that impact patent eligibility—especially for AI innovators—aimed at improving the quality and consistency of subject matter eligibility determinations under §101 through evidence-based analysis.

Biggest Shift

The Office is elevating the use of Subject Matter Eligibility Declarations (SMEDs) under the Patent Rules. See 37 C.F.R. §1.132. One memo trains examiners on evaluating SMEDs; the other guides applicants. Factual evidence—not just attorney argument—should drive §101 outcomes.

Why This Matters for AI

The guidance addresses AI eligibility challenges and references the precedential Ex Parte Desjardins, Appeal 2024-000567 (PTAB, Sept. 26, 2025; precedential Nov. 4, 2025) which can be found here: https://shorturl.at/qMQc4. Claims were directed to methods for training a model on multiple tasks while preserving prior task performance, improving model functioning, reducing storage needs, and simplifying systems.

The Appeals Review Panel, including USPTO Director John A. Squires, vacated the PTAB's sua sponte ineligibility rejection, finding the claims patent-eligible under Alice Step 2A, Prong Two. The memos warn: "Categorically excluding AI innovations from patent protection … jeopardizes America's leadership in this critical emerging technology." (quoting Desjardins, at 9).

Key Takeaways

  • SMEDs matter: Include expert testimony, testing, or state-of-the-art data; examiners weigh under a preponderance-of-evidence standard.
  • AI improvements tied to tech are eligible: Evidence of advances in architecture, learning efficiency, storage, or data structures can satisfy Alice.
  • Separate your SMEDs: Keep eligibility declarations distinct from §103/§112 declarations.
  • Limitations: SMEDs can't add new matter but can establish technological improvements as of the filing date (see MPEP 2106.05(a)).

Policy Signal

Combined with Desjardins, these memos reflect U.S. support for patenting AI innovations through consistent, evidence-driven eligibility analysis.

AI practitioners should now revisit how they document technological improvements and deploy SMEDs strategically to overcome rejections based on patent eligibility under §101.