The USPTO is prioritizing clearer paths to patent eligibility-- especially for AI and software innovations. Over the last week, the USPTO issued (1) a memo to the Examining Corps and a related memo to applicants regarding Subject Matter Eligibility Declarations (SMEDs), which Applicants can use to supply objective, technology-focused evidence to overcome subject matter eligibility rejections, and (2) an update to the Manual of Patent Examination Procedure (MPEP) providing guidance on the evaluation of claims having concrete technical improvements using the subject matter eligibility analysis. Together, these provide practical tools and guidance for patent examiners and applicants regarding subject matter eligibility of software and AI claims presenting concrete technical improvements in the art.

The USPTO Actions at a Glance

The Director’s December 4 Memo to examiners and its Companion Memo to applicants highlights Subject Matter Eligibility Declarations (SMEDs). These memos emphasize that SMEDs can be used to demonstrate how a claimed invention improves computer functionality or other technology and must be weighed under a preponderance-of-the-evidence standard along with the full record. They include concrete hypotheticals showing how SMEDs can establish non-mental processes, computer-function improvements, integration into a practical application, or “significantly more,” while cautioning that SMEDs cannot supplement missing disclosure (though they may establish facts as of the filing date). The thrust: if the specification and claims reflect technical improvement, credible supporting evidence can tip eligibility determinations.

Additionally, a December 5 Advance Memo to the Examining Corps updated the MPEP to integrate the Ex Parte Desjardins decision. Examiners are directed to assess whether claims improve computer functionality or another technical field and to avoid overgeneralizing AI claims. The update also includes specific examples of machine learning improvements that can render claims non abstract. The memo emphasizes evaluating the claim as a whole, ensuring the claim reflects the disclosed improvement, and recognizing when AI related parameter adjustments confer real system level benefits, such as reduced storage, reduced complexity, and mitigation of catastrophic forgetting.

How Companies Should Adapt Now:

• Tell a technical story. Eligibility turns on technical advancements. Use the specification to describe improvements and effects thereof, tied to architectural choices, parameter adjustments, data structures, or training regimes. Ensure the claims include those technical improvements.
• Use SMEDs early and keep them focused. Don’t attempt to use a single declaration to address patent subject matter eligibility evidence and §§ 102/103/112 evidence. For the SMED, provide objective, contemporaneous proof of the technical improvement tied to the specific claim elements (i.e. a “nexus”). Make sure not to introduce new matter. Consider organizing SMED content around common eligibility themes: (i) why the claimed steps cannot be performed in the human mind; (ii) how the claim integrates the idea into a practical application via a technological improvement; and (iii) why the ordered combination amounts to significantly more than the exception.
• Pick the right declarant and draft with litigation in mind in the SMED. Assume statements in a SMED will be used in claim construction or validity fights—be accurate, consistent, thoughtful, and well‑supported. Any person with knowledge of the facts may be the declarant—a named inventor, their co worker, or an independent expert. Opinions on the ultimate legal conclusion carry no weight, but well supported factual assertions do.
• Draft and argue the claim “as a whole.” The updates to the MPEP instruct examiners not to oversimplify claims. Help your Examiner allow your claims by framing the ordered combination of your claim elements as a specific, technical solution to a technical problem, with explicit bridges from specification disclosures to claim steps and parameters. Where your claims reflect those specifics, you strengthen the case that the invention integrates any abstract idea into a practical application.

Bottom Line

Show concrete technical improvements in your specification, reflect the technical improvements in the claims, and back the technical improvements with a focused SMED when needed. Expect eligibility to be more navigable at the USPTO but prepare for sharper scrutiny on novelty, obviousness, and disclosure—and keep one eye on stricter Federal Circuit precedent. Calibrating your filing and prosecution strategy to these signals will improve both allowance prospects and downstream defensibility.