New USPTO Guidance on Declarations

DEREK FAHEY, ESQ.

The United States Patent and Trademark Office issued new guidance clarifying how applicants may use Subject Matter Eligibility Declarations under 37 C.F.R. § 1.132 to address § 101 rejections. The update is especially significant for the software industry, where eligibility concerns under Alice remain a frequent challenge.

The dual memoranda issued December 4, 2025 address both the substance and process of filing these declarations. Together, they reinforce that applicants in applied technology fields such as software may use objective factual evidence to demonstrate patent eligibility.

1. Why Subject Matter Eligibility Declarations Matter

Recent USPTO actions have emphasized that technical innovations improving computational function—such as reduced memory use or enhanced efficiency—may represent technological advancements rather than abstract ideas. The new guidance confirms that declarations can be a powerful vehicle for demonstrating those improvements during examination.

2. Key Procedural Clarifications

• Submit a standalone declaration. The USPTO encourages applicants to separate eligibility declarations from declarations addressing obviousness, novelty, or written description.
• Focus on objective evidence. Useful evidence may include test results, performance benchmarks, architectural comparisons, and expert explanations showing improvements in efficiency, data handling, processing speed, or resource usage.
• Do not introduce new matter. A declaration cannot repair an inadequate original disclosure, but it may explain how a person of ordinary skill would have understood what was disclosed at filing.

3. How Examiners Must Treat The Evidence

Examiners must consider a properly submitted declaration on its merits and weigh it with the full record under a preponderance-of-the-evidence standard. They are also instructed to document their reasoning in the next Office Action whether the eligibility rejection is maintained or withdrawn.

4. Software-Specific Use Cases

The guidance identifies examples involving distributed network monitoring, database architecture, neural-network performance, and automated animation. Each illustrates the importance of supporting eligibility arguments with factual evidence rather than conclusory statements.

5. Recommendations For Software Clients and Counsel

1. Identify and document technical improvements early.
2. Prepare for § 101 challenges during prosecution.
3. Use inventors, technical staff, or independent experts where appropriate.
4. Keep eligibility evidence separate from evidence addressing other statutory requirements.
5. Use the USPTO’s examples as persuasive analogies when the facts align.

Final Thoughts

The guidance does not change the underlying legal standard, but it gives applicants a clearer procedural path for presenting evidence. For software clients, the key takeaway is that eligibility can turn on factual support showing how the claimed invention improves technology. Properly prepared declarations may help software and AI innovations withstand § 101 scrutiny and secure enforceable rights.