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USPTO Clarifies Use of Eligibility Declarations for Patent Applications
By Ferraiuoli LLC
The United States Patent and Trademark Office issued new guidance reminding examiners and applicants that Subject Matter Eligibility Declarations can be used to provide technical evidence supporting patent eligibility under Section 101.
The United States Patent and Trademark Office (USPTO) issued a memorandum to its examining corps clarifying the use of Subject Matter Eligibility Declarations (SMEDs), a type of submission applicants may file to provide technical evidence supporting the patent eligibility of an invention under Section 101 of U.S. patent law. The document, dated December 4, 2025, notes that SMEDs are permitted under existing rules—specifically 37 CFR 1.132—and may assist applicants in responding to eligibility rejections, although their use is voluntary.
According to the USPTO, SMEDs allow applicants to introduce data, technical explanations, or factual material that help demonstrate that an invention constitutes a concrete technological improvement rather than an abstract idea. The memo also emphasizes that these declarations should focus exclusively on eligibility matters and not be combined with evidence or arguments related to novelty, non-obviousness, or other patentability requirements, to avoid confusion during examination.
The USPTO situates the memo within the context of a recent precedential decision issued by the Patent Trial and Appeal Board in In re Desjardins on September 26, 2025. In that decision, the Board vacated a Section 101 rejection directed at a machine-learning invention and held that certain improvements in computational performance, model efficiency, data structures, or training processes can qualify as patent-eligible technological advancements when properly described and claimed. The memorandum states that this ruling underscores the relevance of providing concrete technical information in support of eligibility and that SMEDs are an appropriate vehicle for doing so.
The agency explains that the objective of the memorandum is to ensure that examiners are aware of this existing mechanism and to encourage consistent consideration of SMEDs during the examination process, particularly in fields such as software and artificial intelligence where eligibility questions frequently arise.
Ferraiuoli LLC
Ferraiuoli LLC (FLLC) was founded in 2003 by the late Blas Ferraiuoli-Martínez, Eugenio Torres-Oyola and María Marchand-Sánchez. This group was then joined in 2004 by Fernando J. Rovira-Rullán, thus forming the founding core of FLLC. FLLC has grown exponentially since its founding from a law firm with three attorneys and a support staff of three to its current size of 54 attorneys with a support staff of 38. Also, FLLC has grown from initially being known as an intellectual property and corporate law boutique law firm to a multiservice law firm that handles most matters relevant to a business while continuing to earn praise for its leading intellectual property and corporate practices.
FLLC has been ranked as a leading law firm in Puerto Rico by the professional publication Chambers Latin America in intellectual property, corporate, bankruptcy, labor & employment, real estate, and tax law. Moreover, 17 FLLC partners have been ranked as leaders in their field by the same publication. 4 FLLC partners are ranked as leaders in Intellectual Property, no other firm has more than 2. This recognition in such a short period of time is a tribute to FLLC’s business model.
FLLC prides itself in doing its work faster and more cost-efficiently yet with the same quality as that of its main competitors. The founding name partners are available at all times to attend to client matters. Their work ethic sets the tone for the rest of the firm. FLLC’s founders’ goal has been steady from the outset: become one of the premier multiservice law firms in Puerto Rico.
