The United States Patent and Trademark Office (“USPTO” or the “Office”) released several memoranda[1] the week of December 1, 2025, providing a clearer framework for subject matter eligibility in artificial intelligence (“AI”) and other software-driven innovations. The first two memos address Subject Matter Eligibility Declarations (“SMEDs”). The third memo introduced upcoming changes to the Manual of Patent Examining Procedure (“MPEP”) for subject matter eligibility guidance including the use of SMEDs, and also clarifying what qualifies as a technical improvement. By highlighting little used prosecution tools such as expert declarations, and outlining how AI-related technologies should be evaluated under current subject matter eligibility frameworks, the USPTO has provided much needed guidance to examiners and practitioners alike in how to approach patent protection in a rapidly changing field. In doing so, the USPTO’s guidance goes beyond the use of SMEDs and provides useful guidelines for practitioners in preparation and prosecution of software-related patent applications.

Building on the Office’s designation of In re Desjardins[2] as precedential, the USPTO released two memos on December 4. The first memo was addressed to patent examiners, and provided guidance to patent examiners in examination of SMEDs. The second memo was addressed to applicants and practitioners, and expressly encourages the use of expert evidence in the form of SMEDs to overcome § 101 rejections. Office explains that improvements to model performance, memory, data structures, and system architecture can provide the “something more” under Alice, and reiterates that applicants may submit focused SMEDs under Rule 132. Examiners must weigh such declarations under a preponderance standard, and while SMEDs cannot cure disclosure gaps, they can substantiate how a person of ordinary skill in the art would read the specification as disclosing a technological improvement reflected in the claims. 

On December 5, the USPTO released an additional memo to the Patent Examining Corps regarding notice of changes to the MPEP in light of Ex Parte Desjardins.[3] These changes provide several helpful guidelines for patent practice in the software arts in addition to the use of SMEDs. In one example, the USPTO highlights that “benefits including reduced storage, reduced system complexity and streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks [are] technological improvements” that, when incorporated into a claim, show integration of an abstract idea into a practical application. Specifically with respect to machine learning models, the memo highlights that improvements in the machine learning technology itself are examples of an improved technology or technical field, and are not directed to a judicial exception.

The guidance offers two practical takeaways for applicants. First, practitioners should provide an explicit tie between concrete technical improvements in the specification and the claims. Consideration should be given to the examples of technical improvements identified in the memos, including reduced storage, reduced system complexity and streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks, prevention of catastrophic forgetting, architectural changes to information flow, or measurable accuracy or latency gains. Second, ensure the evidence carries weight. A SMED can offer expert testimony on the state of the art, explain why steps cannot be performed in the human mind, pinpoint where the improvement appears in the claim, and include test data or publications showing the claimed arrangement is unconventional as a whole, even if individual components are routine. Opinions on the legal conclusion of eligibility carry no weight. What matters are objective, claim‑tethered facts that create a clear nexus without improperly supplementing the specification. 

The bottom line: subject matter eligibility for AI often turns on objective, claim‑tethered facts, and explicit support of a USPTO-identified technical improvement can make the difference. In response to a rejection, a focused SMED tied to the technical improvements in the claims can move prosecution forward. By leveraging the USPTO’s latest guidance and strategically utilizing SMEDs, applicants can strengthen their position for patent eligibility and confidently navigate the evolving landscape of AI and software innovation.