In a recent set of memos, United States Patent and Trademark Office (USPTO) Director John Squires emphasized that evidentiary declarations under Rule 132 are underused tools during patent prosecution, particularly for overcoming subject matter eligibility rejections. While the memos do not change existing guidance, they adopt a notably positive stance on using subject matter eligibility declarations (SMEDs) to refute rejections under 35 U.S.C. § 101, marking a significant shift in the perceived influence of declarations during prosecution.
Overview of the New USPTO Memos
The USPTO issued two memos providing additional guidance on SMEDs.
Subject matter eligibility declaration memo
This memo reiterates the patent-owner-friendly viewpoints on subject matter eligibility expressed in Ex Parte Desjardins, outlines declaration requirements, emphasizes that examiners must consider and address any evidence provided before maintaining a subject matter eligibility rejection, and provides several examples of influential SMEDs. Notably, the examples address all stages of the subject matter eligibility framework traditionally argued during prosecution.
Best practices memo
The second memo summarizes filing requirements for Rule 132 declarations and strongly encourages issue-specific declarations. The USPTO recommends submitting SMEDs as standalone documents rather than combining them with declarations addressing other issues, such as obviousness.
Takeaways and Best Practices
Together, the memos reinforce the USPTO’s patent-owner-friendly trend by reviving an underutilized tool to combat § 101 rejections. Applicants should consider preparing or filing declarations for inventions subject to eligibility scrutiny, including fintech, artificial intelligence (AI), medical diagnostics, and other areas facing heightened examiner focus.
Applicants should consider filing issue-specific declarations, submitting separate declarations for each rejection in an office action rather than consolidating multiple issues into one.
They should also consider targeting all stages of the Alice subject matter eligibility test. Declarations may provide:
- Evidence that a claim element cannot be performed within the human mind or address whether the examiner correctly identified a judicial exception in the claims (Step 2A, Prong 1).
- Evidence that the claim elements provide a practical application of the alleged judicial exception by improving computer functionality, improving a technological field, or effecting a particular treatment or prophylaxis (Step 2A, Prong 2).
- Evidence that the claim amounts to “significantly more” than an abstract idea (Step 2B).
Considerations for Software-Related Inventions
The memo examples highlight two types of objective evidence that are particularly relevant for software-related inventions. In one example, the objective evidence includes technical implementation details for supporting testimony that a software product cannot be practically performed within the human mind. In another example, the objective evidence includes performance metrics for supporting testimony that a software product outperforms state-of-the-art systems. Based on these examples, applicants should be mindful of two different types of declarations that may be particularly effective:
Prong 1 declarations
Applicants may submit evidence of the technical implementation of a software product and testify that the technical implementation is too complex to be practically performed within the human mind.
Prong 2 declarations
Applicants may submit objective evidence and testimony of performance improvements, such as detailed metrics demonstrating enhancements to computer functionality or technological fields.
Applicants should also plan ahead during drafting. This includes soliciting technical implementation details or performance metrics for software products early in the drafting process and recording these details to avoid delays when an eligibility rejection arises. Likewise, applicants should draft patent specifications by incorporating objective evidence directly or referencing it anecdotally to support future declarations.
Finally, for particularly sensitive cases, applicants may consider preemptive declarations, drafted during the initial preparation of a patent application. These should address multiple layers of claim elements to maintain a nexus between the testimony of the declaration and the claimed invention as the patent claims evolve during prosecution.
If you have any questions, or would like additional information, please contact one of the attorneys on our Intellectual Property team.
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