USPTO clarifies use of Rule 132 “SMED” evidence for AI patent eligibility (USPTO guidance; §101 practice)

What happened

The USPTO issued two memoranda in late 2025: (i) to the Examining Corps on SMED use and examiner obligations, and (ii) to applicants/practitioners on best practices for submitting SMEDs as separate, eligibility‑focused declarations under 37 C.F.R. § 1.132. The examiner memo reiterates that SMEDs are optional, must have a nexus to the claims, cannot add new disclosure, and must be weighed under a preponderance standard; examiners must explain outcomes in the next Office action. The applicant memo urges separate SMEDs (not combined with § 103 evidence) to avoid conflating issues and to facilitate focused examiner review. The Office also references the precedential Desjardins decision underscoring that improvements in computational performance, learning, storage, and data structures can be eligible.

Breakdown

A U.S. patent is a government‑granted right that lets an inventor exclude others from making, using, or selling the claimed invention for a limited time in exchange for publicly disclosing how it works. The USPTO examines applications to decide whether claims meet legal criteria like being the right “type” of subject matter, being new, non‑obvious, and sufficiently described. Section 101 governs the threshold “type” question: what categories of things are eligible to be patented before the Office even reaches “new” or “non‑obvious.” The USPTO emphasizes that properly supported claims that improve computer technology or apply an exception in a meaningful, practical way can be eligible. This is the “something more” requirement described in cases like Alice and in Office guidance.

A “SMED” is a subject matter eligibility declaration - a sworn factual statement (from an inventor or expert) that supplies objective, claim tied facts to help show that the claimed invention is “eligible” under Section 101. For example, that it improves the functioning of a computer, enhances a neural network architecture, reduces storage, or integrates an abstract idea into a real world application. It is voluntary, should be focused solely on eligibility, and must not try to add new disclosure that was missing from the application. Examiners must consider them and decide eligibility based on the total record under a preponderance standard.

Why it matters

Patent eligibility for AI innovations often turns on demonstrating a concrete technical improvement or practical application, not abstract functionality; the SMED path provides a structured way to put those facts formally into the record. Using a separate, eligibility‑focused declaration can help examiners connect claimed AI architecture or training approach to objective performance gains or architectural changes, which are flagged as eligibility‑relevant. Because examiners must weigh properly supported SMED facts under a preponderance standard, high‑quality testing data and expert explanations can be outcome‑determinative when eligibility is close. Equally, SMEDs cannot fix missing disclosure, so it is important that specifications describe the improvement such that a skilled artisan would recognize it and that the claims reflect it. In short, this guidance strengthens a practical toolkit to prosecute AI‑related patents by aligning evidence, claims, and disclosure around tangible technical advancements.

What to watch

Monitor how examiners apply the preponderance standard to SMEDs and whether Desjardins’ precedential framing of AI improvements continues to guide § 101 outcomes in practice. The USPTO may release additional training materials or job aids that operationalize SMED handling, and as always, keep an eye out for examiner explanations in Office actions. 

Bottom Line

Targeted, separate SMEDs with objective, claim‑tied facts can materially improve § 101 outcomes for AI inventions, but they must build on adequate specification support and clear claim drafting. The USPTO’s guidance gives AI teams a practical evidentiary playbook to show technological improvements at the eligibility gate.