Through a trio of recent actions, the United States Patent and Trademark Office (PTO) has provided applicants and examiners with guidance on subject matter eligibility under 35 U.S.C. § 101. The guidance outlines a revised framework for evaluating artificial intelligence (AI) and software claims. The guidance focuses on two primary developments: the designation of In re Desjardins as precedential and the evidentiary procedures for demonstrating technological improvement.
The Desjardins Precedent: Validating AI Architecture
PTO Director John Squires has designated the decision in In re Desjardins as precedential. In Desjardins, the PTO vacated a rejection because the claims improved a model’s training to reduce storage requirements and prevent "catastrophic forgetting." The decision, by an Appeals Review Panel (ARP) helmed by Director Squires, establishes that improvements to a machine learning model’s internal functioning, such as enhancing computational performance, storage efficiency, or learning capabilities, are patent-eligible technological advancements.
The ARP explicitly warned that "categorically excluding AI innovations from patent protection... jeopardized America's leadership" in emerging technologies. Consequently, § 101 is now reaffirmed as merely a "subject matter gatekeeper," with questions regarding the scope of protection more focused on novelty (§ 102), non-obviousness (§ 103), and written description, etc. (§ 112) inquiries.
The Rise of the Subject Matter Eligibility Declaration (SMED)
In a pair of memorandums, the PTO elucidated a specific mechanism to help applicants cross the eligibility threshold: the Subject Matter Eligibility Declaration (SMED). A SMED is an evidentiary declaration under 37 CFR § 1.132 that allows applicants to demonstrate that an invention offers a technological improvement, even if that improvement is not immediately obvious on the face of the claims. The PTO notes that for emerging technologies, the "something more" required for eligibility is often found in how the invention changes the system's architecture, specifically how the invention changes system architecture or "how information flows, not just what it does."
For instance, as Director Squires explains in the memos, if an examiner dismisses a neural network as a mathematical concept, a SMED can present objective data showing the architecture achieves superior regression performance, thereby proving a specific improvement in computer capabilities. Similarly, in fields like computer animation, the SMED memo explains that a declaration can distinguish technical rules from artistic choices by demonstrating how the software automates tasks like lip-syncing that previously required human intervention.
Strategic Best Practice: The "Separate Submission" Rule
While it is procedurally permissible to file a single declaration addressing multiple issues, the PTO strongly advises applicants to file SMEDs as standalone documents, distinct from declarations addressing obviousness or other statutory requirements. A separate submission allows the examiner to evaluate the Section 101 evidence on its own merits. Director Squires further explains in the memos that by filing SMED separately, the risk of the examiner conflating the "technological improvement" needed for eligibility with the "unexpected results" needed for non-obviousness, or inadvertently entangling eligibility debates with written description issues, may be avoided.
Conclusion
The Desjardins decision and the vehicle provided by SMEDs represent an evolution in how the PTO evaluates software and AI patent applications for subject matter eligibility. By moving away from broad categorical exclusions and inviting objective evidence of architectural and technical improvements, the PTO has brought to the forefront the availability of SMEDs to rebut subject matter eligibility rejections set forth against next-generation technologies.
Innovators should work closely with patent counsel to ensure their specifications describe these technological improvements in sufficient detail and be prepared to leverage SMEDs to substantiate those advancements during prosecution.
Links:
Authors: Melanie Chernoff and Natalie Richer
Edited by Orville Cockings and James Vezeris
For more articles on this topic, please visit our website: https://www.lernerdavid.com/practices/patent-procurement