Subject Matter Eligibility

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PatentNext Takeaway: On April 30, 2026, the USPTO issued a memorandum titled “Best Practices for Submission of Rule 132 Subject Matter Eligibility Declarations (SMEDs),” updating the Office’s December 4, 2025 guidance to applicants and practitioners.  The new memorandum reinforces the Office’s SMED framework and characterizes it as a living body of guidance informed by practitioner experience.

The result is not a change in law or procedure, but a signal: the USPTO views SMEDs as an increasingly important evidentiary tool for resolving § 101 issues in emerging and fact‑intensive technologies, particularly artificial intelligence and diagnostics.

Continue Reading USPTO Updates SMED Best Practices

PatentNext Takeway: Ex parte Desjardins—and especially the USPTO’s decision to make it precedential—appears to be shifting examination away from § 101 and toward § 112 written-description scrutiny, particularly for AI-related inventions. For AI-related inventions, a central takeaway is that practitioners should expect more examiner demands for concrete disclosure of how an AI model is trained, what inputs and outputs are used, how preprocessing and post-processing occur, and how inference or agentic workflows actually operate. Prosecution data and a recent office action example also suggest that written-description rejections are increasing both overall and in AI applications. The practical implication is that patent applicants should not rely on high-level “black box” AI descriptions, but instead should draft specifications with enough technical detail to demonstrate possession of the claimed invention.

Continue Reading USPTO Examiners issue more Written Description (Section 112) rejections following Precedential Ex Parte Desjardins decision

On December 4, 2025, the United States Patent and Trademark Office (USPTO) issued two memoranda addressing the use of Subject Matter Eligibility Declarations (“SMEDs”) during patent prosecution, both from Director John Squires.  The first, the SMED Examiner Memo, targets the Patent Examining Corps, clarifying how examiners should treat applicant-submitted evidence under 37 CFR 1.132 in traversing subject matter eligibility (SME) rejections.  The second, the Best Practices for SMEDs Memo, addresses the legal community, emphasizing strategies for maximizing the value and probative weight of SMEDs.  This article summarizes both memos, offering practical insights for innovators, patent professionals, and stakeholders navigating the Section 101 landscape.

Continue Reading USPTO Issues Guidance on Subject Matter Eligibility Declarations (“SMED”)

PatentNext Summary: Announcing the IPO’s AI Patenting Handbook V3.0, which is a newly updated third edition of IPO’s practical guide for attorneys working with AI-related inventions and technologies. It offers a clear framework for understanding modern AI (including foundation models and generative AI), drafting and prosecuting stronger AI patent applications, and navigating enforcement, global practice, and emerging AI inventorship and governance issues—designed as a day-to-day reference for in-house and outside counsel.

Continue Reading Artificial Intelligence (AI) Patenting Handbook: Version 3.0

               On August 4, 2025, the USPTO issued a memo to patent examiners with the subject “Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101.” [1]
 Much has been made of these reminders and what they might signal in terms of a possible shift in how the Office treats rejections under § 101…

PatentNext Summary: The USPTO issued “Reminders” for examiners in Tech Centers 2100/2600/3600 addressing §101 eligibility for software and Artificial Intelligence(AI) / Machine  Learning (ML)-related inventions; while not changing the MPEP, the guidance is meant to sharpen examination practice. It clarifies Step 2A, Prong One by limiting “mental process” to what can be practically performed in the human mind—stating that AI claim limitations not performable mentally are not “mental processes”—and by distinguishing claims that merely involve a judicial exception (e.g., Example 39) from those that recite one (e.g., Example 47). For Step 2A, Prong Two, examiners must evaluate the claim as a whole to identify a practical application, giving weight to meaningful additional limitations and to improvements in computer capabilities or a technical field, even if the improvement is only implicit in the specification. The Reminders caution against oversimplified “apply it” rejections, require a preponderance of evidence for “close call” §101 rejections, and reinforce compact prosecution that fully addresses §§102/103/112 for every claim in the first action.

Continue Reading USPTO Issues “Reminders” Supporting AI and Software Patenting and instructing Patent Examiners on the Limits of Section 101 Patent Eligibility 

PatentNext Summary: In a precedential decision, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s §101 dismissal of patent claims relating to an automated system for dumbbell weight selection and adjustment, finding that the claims were not abstract under Alice step one and therefore are patent-eligible. The Federal Circuit held that…

PatentNext Summary: In Brightex Bio-Photonics, LLC v. L’Oreal USA, Inc., the U.S. District Court for the Northern District of California invalidated patent claims relating to AI-driven cosmetic recommendations, finding them directed to an abstract idea under 35 U.S.C. § 101. The court held that while the specification referenced artificial intelligence, the claims themselves failed…

PatentNext Summary: In two recent decisions, the Federal Circuit reaffirmed that merely applying artificial intelligence or digital techniques to a specific “field of use” does not satisfy patent eligibility under 35 U.S.C. § 101. In Recentive Analytics v. Fox Corp., claims directed to AI-assisted television scheduling were deemed abstract for lacking inventive implementation. Similarly, in…

PatentNext Summary: The Federal Circuit’s decision in Recentive Analytics, Inc. v. Fox Corp. found that applying generic machine learning techniques to a new environment, without a specific technological improvement, is patent-ineligible under 35 U.S.C. § 101. The court emphasized that claims must articulate concrete technological advancements rather than merely applying established methods to different domains.