USPTO Director John A. Squires issued a memorandum superseding the December 4, 2025 Best Practices memo on Rule 132 Subject Matter Eligibility Declarations (SMEDs). No substantive changes to the framework—the companion SMED Examiner Memo and MPEP updates remain in place. The update reinforces existing best practices and flags two procedural issues now under advisement.
For practitioners prosecuting AI, software, fintech, or medical diagnostics applications where §101 is a recurring fight, practical implications are immediate.
What the Update Reinforces
- 📄 File SMEDs separately. A standalone declaration focused solely on §101 keeps the evidentiary record clean. Bundling with §103 or §112 arguments in one Rule 132 declaration risks conflating distinct evidentiary standards and undermines probative value.
- 🔗 Nexus is non-negotiable. The declaration must establish a direct connection between the claimed invention and the evidence presented. Declarations that drift beyond claim scope may create new problems.
- ⚡ Technological improvement must be concrete. Better, faster, cheaper, or more efficient relative to existing solutions, tied to specific mechanisms in the specification. Functional assertions without technical grounding will not carry weight.
Based on the decision in Ex parte Desjardins (PTAB precedential, Sept. 26, 2025)—SMEDs operationalize a PTAB-backed practical-application pathway, not just agency guidance.
Two Developments Worth Tracking
The memo now has real-world impact. Early practitioner feedback has been positive, and the Office signals further updates as prosecution experience accumulates.
More significantly, the Office is taking two related practitioner suggestions under advisement: (1) the examiner's initial prima facie burden under In re Oetiker applies to any rejection, including §101, regardless of how a Rule 132 declaration is filed; and (2) whether MPEP §716.01(c)(III)'s "weighing" framing fully captures the import of an unrebutted declaration. No revision has been committed to yet.
The USPTO has also welcomed Barry Schindler as Deputy Commissioner for Patents, with a public focus on AI policy and operations. Worth watching what comes out of that office next.
Sources:
USPTO source: https://lnkd.in/eNtC5Rxx