Patent applicants facing a Section 101 rejection often struggle to demonstrate that an invention represents a technological improvement rather than an abstract idea. The United States Patent and Trademark Office’s recent guidance on Subject Matter Eligibility Declarations (SMEDs) may provide applicants with an additional evidentiary tool. By using a Rule 132 declaration to explain how a person of ordinary skill would understand the invention and its technical benefits, applicants may be able to strengthen patent eligibility arguments during prosecution.
Anyone who has responded to a Section 101 rejection knows the familiar exercise. We explain that the claimed invention is a technological improvement. The examiner explains why it is an abstract idea. We cite Enfish. Everyone has a perfectly nice afternoon talking past each other (kidding, kind of).
The USPTO’s developing guidance on Subject Matter Eligibility Declarations, or SMEDs, offers another tool.
What Is a Subject Matter Eligibility Declaration (SMED)?
An SMED is a voluntary declaration under Rule 132 directed specifically to patent eligibility. Rather than relying exclusively on attorney argument, an applicant can submit evidence explaining how a person of ordinary skill would understand the disclosed technology and its claimed improvement.
That could be particularly useful for software and other inventions where the technological advance is real but not necessarily obvious from reading the claims in isolation. A declarant might explain the technological problem, how the disclosed invention addresses it, and why a skilled artisan would recognize the claimed approach as an improvement.
The Limits of Rule 132 Evidence
There is, naturally, a catch. Patent law rarely gives us a new tool without one. An SMED cannot manufacture an improvement that was never disclosed in the application. The declaration must be tied to both the original disclosure and the claimed invention. In other words, Rule 132 is not a time machine.
That may be the most important lesson here. SMEDs are not just a new prosecution tactic. They are a reminder that Section 101 strategy begins when the application is drafted.
Why Patent Drafting Still Matters
If an invention improves computer performance, processing efficiency, diagnostic technology, or some other technical function, applicants should consider explaining what improves, why it improves, and how the invention produces that improvement in the specification itself.
Then, if Section 101 comes calling, we may have something better than attorney argument: evidence.
Practical Considerations for Patent Applicants
While SMEDs may become a valuable prosecution tool, applicants should view them as supplemental evidence rather than a substitute for a well-drafted patent application. Companies developing software, artificial intelligence technologies, medical devices, manufacturing systems, and other innovative technologies should consider including in the specification of their patent application:
- The specific technological problem being addressed
- Limitations of existing approaches
- The technical improvement achieved by the invention
- How the invention improves system performance, efficiency, reliability, or functionality
- Why a person of ordinary skill would recognize the improvement as technological rather than abstract
Establishing these points during patent drafting may create a stronger foundation for future patent eligibility arguments if a Section 101 rejection arises during examination.
Frequently Asked Questions About SMEDs and Section 101
What is a Subject Matter Eligibility Declaration (SMED)?
A Subject Matter Eligibility Declaration is a voluntary declaration submitted under Rule 132 that provides evidence regarding how a person of ordinary skill in the art would understand a claimed invention and its technological improvement.
Can an SMED overcome a Section 101 rejection?
An SMED may strengthen a patent applicant’s eligibility arguments by providing factual support regarding the claimed technological improvement. However, a declaration alone does not guarantee allowance and must be filed along with compelling arguments to rebut a Section 101 rejection.
Can a Rule 132 declaration add new information to a patent application?
No. The declaration must be grounded in the original patent application and claimed invention. It cannot introduce a technological improvement that was not disclosed in the application as filed.
When might an SMED be most useful?
SMEDs may be particularly useful for software, artificial intelligence, computer-implemented inventions, and other technologies where the technical improvement may not be readily apparent from the claims alone.
As the USPTO continues refining its approach to patent eligibility, SMEDs may become an increasingly important tool for patent applicants and practitioners navigating Section 101 challenges. Whatever the technology area, the most effective strategy remains the same: build a strong record from the beginning. A well-drafted specification that clearly explains the technological problem and the improvement achieved may provide the foundation needed for both effective patent prosecution and, when appropriate, meaningful evidentiary support through an SMED.
About the Author
Daniel C. Pierron is an Equity Partner at Widerman Malek and a registered patent attorney who assists inventors, startups, and businesses with patents, trademarks, intellectual property strategy, and technology-related legal matters before the U.S. Patent and Trademark Office (USPTO). He holds a B.S. in Engineering Physics from the University of Kansas and a J.D. from Chicago-Kent College of Law.
