Artificial Intelligence (AI) is a hot topic right now, whether as a watercooler topic about how it can make our work tasks easier or for the funny memes it can be used to create. AI is everywhere and on everyone’s mind.
On a more serious note, the AI effect on the many technologies that are woven through our everyday lives has resulted in revisions to the patent examination process at the U.S. Patent and Trademark Office (USPTO). Some of these changes may make it easier for patent applicants in the application software or computer software fields to obtain patent protection for their inventions.
In 2025, John A. Squires became the new Under Secretary of Commerce for Intellectual Property and Director of the USPTO. On December 4, 2025, Director Squires issued a memo to the U.S. Patent Examining Corps providing guidance on patent “subject matter eligibility” – a notion which is a “gate keeper” condition to an invention’s patentability. To be eligible under 35 U.S.C. 101, a claimed invention must fall within one of the four statutory categories of invention: process, machine, article of manufacture, or composition of matter. In addition, that invention must be directed to patent-eligible subject matter (i.e., subject matter eligibility). To be patentable, the “invention” cannot be based on abstract ideas, laws of nature and natural phenomena (including products of nature), unless the patent claims as a whole include additional limitations amounting to significantly more than these judicially created exceptions. This is where Director Squires’ December 4, 2025, memo becomes important.
This memo is the result of a recent decision by the USPTO in a rare Appeal Review Panel (ARP) decision. That recent case is In re Desjardins, which addressed a subject matter eligibility rejection under 35 U.S.C. 101 of patent application claims directed to training an AI machine learning model on multiple tasks. The USPTO examination initially characterized those claims as directed to an abstract idea without significantly more, but the ARP decision reversed that position and indicated that in part, to categorically exclude AI innovations from patent protection jeopardizes America’s leadership in emerging technologies. Director Squires’ memo goes on further to take the time to remind U.S. patent examiners, as well as applicants (and practitioners!) of the option to provide “evidentiary submissions to attempt to overcome Section 101 rejections.” These are referred to simply as Subject Matter Eligibility Declarations (SMEDs).
A point of this memo is to raise the patent examining corps’ awareness of the existing option for applicants to submit a SMED under 37 C.F.R. 1.132, as an under-utilized path to proffer evidence to establish subject matter eligibility and get past the gate keeper that is 35 USC 101. A likely consequence of that enhanced awareness may be an increase in the number of patent applications that meet the “subject matter eligibility” threshold for patentability.
Client inventors can use SMEDs to demonstrate patent eligibility that may not otherwise be apparent. These declarations cannot be used to add disclosure that should have been in the original patent application, so it is still strongly encouraged that your client employ a patent attorney to prepare a patent application (and thus hopefully avoid a subject matter eligibility issue altogether). But these SMEDs may provide facts that describe the state of the art at the time of filing the patent application, otherwise provide objective evidence as to how the invention has improved the state of the art or underlying technology, or even to support the position that the invention amounts to significantly more than an abstract idea, law of nature or natural phenomena.
So, if your client is in the business of AI (like the creator of Tilly Norwood) or innovates in areas that uses abstract ideas (like mobile apps?), laws of nature, or natural phenomena (like plant-based cosmetic compositions?), 35 USC 101 may not be such a feared patentability gate keeper to your client – with the right patent attorney on board!
