by Dennis Crouch
The USPTO has issued new guidance on using Rule 132 declarations to address subject matter eligibility rejections. The two memoranda, signed by Director John A. Squires on December 4, 2025, provide a new roadmap for how applicants can submit evidentiary declarations to overcome § 101 rejections. One memorandum is directed to the Patent Examining Corps, explaining how examiners should evaluate these submissions. The other is directed to applicants and practitioners, outlining best practices for preparing what the USPTO now calls "Subject Matter Eligibility Declarations" or SMEDs. The guidance does not create new procedures but instead highlights an existing and underutilized path under 37 C.F.R. § 1.132 for submitting evidence that may help establish patent eligibility.
The SMED guidance arrives as part of Director Squires's broader effort to address what he has characterized as "conflicting (and confusing) questions about patent subject matter eligibility." In his view, Examination and Eligibility are two distinct issues that should be separated. On his first day in office, Squires signed two patents in technical fields that have frequently faced eligibility challenges: distributed ledger/crypto technologies and medical diagnostics. Three days later, he issued the In re Desjardins Appeals Review Panel decision, Appeal No. 2024-000567 (PTAB Sept. 26, 2025), vacating a PTAB sua sponte § 101 rejection of claims directed to training machine learning models while preserving prior tasks. That decision, which Squires designated as precedential on November 4, 2025, warned against overbroad eligibility rejections and emphasized that improvements in "computational performance, learning, storage, data sets and structures" can constitute patent-eligible technological advancements under the Alice framework. The SMED memoranda represent the next step in this initiative, providing applicants with tools to build an evidentiary record supporting eligibility.
In the past, many patent attorneys have avoided filing Rule 132 declarations except as a last resort. The reasons are familiar: expense, the difficulty of establishing a sufficient nexus between the evidence and the claims, and concern about seeding the prosecution record with testimonial statements that could later be used against the patent owner in litigation. But I believe the SMED memoranda represent a new opportunity. Here, the Director is affirmatively inviting these submissions and signaling that they will be given meaningful weight in the eligibility analysis. For applications of potential value, practitioners should consider whether a SMED might strengthen their response to a § 101 rejection, ideally after vetting the approach with experienced patent litigation counsel who can help navigate the prosecution history implications.
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