Certain technologies, such as software and artificial intelligence, frequently encounter subject matter eligibility rejections at the United States Patent and Trademark Office (USPTO). These rejections, which are not an assessment of whether the invention in the patent application is novel, but rather whether the invention is “abstract” or is not the type of subject matter permitted to be patented, have long posed a difficult and uncertain obstacle to obtaining patent protection in these critical technical fields.

The new Director of the USPTO, John A. Squires, committed in remarks at the American Intellectual Property Law Association (AIPLA) Annual Meeting in October to clarify and provide guidance on what he acknowledged are “conflicting (and confusing) questions about patent subject matter eligibility”.

Following that commitment, the USPTO recently released resources and guidance on Subject Matter Eligibility Declarations (SMEDs) to patent examiners and applicants that clarify how applicants can best use an existing tool, Rule 132 declarations, as evidence to support subject matter eligibility.

A Rule 132 declaration is a tool that has long been available as a means for an applicant to submit evidence to traverse a rejection made by the USPTO. These declarations, such as a description from the inventor of the advantages and improvements of the invention over the prior art, are typically viewed as a last resort that risks characterizing the invention in an overly narrow manner. The recent USPTO guidance, however, notably emphasizes and reminds applicants that a properly submitted Rule 132 declaration must be considered by the examiner and can serve a “unique evidentiary role” in overcoming an eligibility rejection. In the subject matter eligibility context, in light of this explicit emphasis from the USPTO, carefully tailored SMEDs that tie a technical improvement to limitations already in the claims may overcome these difficult rejections without undermining the scope of the resulting patent.

To aid in the preparation of effective SMEDs, the USPTO provided several guiding principles:

• Relation to the Content of the Application: The SMED must provide a nexus between the invention as claimed and the evidence in the declaration without improperly supplementing the specification.
• Evidentiary Support: The evidence provided in the SMED should be objective and supported by proof, not bare assertions that the invention is patent eligible subject matter.
• Format: The SMED declaration addressing a subject matter eligibility rejection should be submitted in its own declaration separate from other Rule 132 declarations to avoid conflating issues.
• Examples of SMED Content: The USPTO provided useful examples of the type of SMED declaration that could prove useful in overcoming a subject matter eligibility rejection, including:
  • Expert testimony on how one of ordinary skill in the art would interpret existing claim limitations, in view of the specification, as not practically performed in the human mind.
  • A description of how the specification’s discussion of the prior art and the improvement of the invention is reflected in the claims.
  • A submission of test data showing that a claimed computer structure exhibits superior performance in comparison with the prior art.

The USPTO continues to update its guidance on subject matter eligibility in an effort to limit overbroad rejections, clearing the path for more patents in critical technological areas while remaining within the scope of existing caselaw. Our IP group is closely monitoring these developments and is prepared to assist clients in leveraging the suggested tools and guidance to protect their most critical innovations.

If you have any questions about patent protection and subject matter eligibility, please contact partner Kevin Myhre or any member of Barley Snyder’s Intellectual Property Practice Group.