SMEDs: A Practitioner’s Best Tool for § 101?
Director Squires issued a memorandum late September on Subject Matter Eligibility Declarations (SMEDs) that continues a series of memos on the subject. Two flowcharts on when and how examiners should consider SMEDs were issued alongside the memo. The memo begins by summarizing the previous changes Direction Squires has made to USPTO policies on § 101 and then provides five points of “best Practices for Submitting a SMED.”
The two flowcharts are meant to be cohesive with the first flowchart essentially being a list of requirements that must be satisfied before an examiner should consider the merits of a filed SMED. A novel point on this flowchart is that a SMED can still be timely when filed “after final rejection, but before or on the same date of filing an appeal” if there is “a showing of good and sufficient reasons.” But no further details or examples are provided on what “a showing of good and sufficient reasons” should look like, and this can pose a challenge to both the practitioner trying to provide reasons and to the examiner trying to decide whether to consider an after-final SMED. With the USPTO providing minimal “other time” for training, a majority of examiners likely have no guidance on when to consider SMEDs beyond what is stated on the flowchart, and this means that there may be inconsistencies between examiners as to what a “good and sufficient reason” looks like. But this change in policy might still provide a new opportunity to file a SMED when a § 101 rejection is persistent.
The second flowchart explains how an examiner should weigh the “probative value” of evidence provided in a SMED and is consistent with previous MPEP guidance on the matter. While the information may not be new, the flowchart may be useful when arguing that an examiner has not provided sufficient reason or a correct analysis on why a SMED was unpersuasive.
The memo itself provides five points of “best practices” for practitioners to follow when submitting a SMED: (1) Submit a SMED separately from other declarations (e.g. enablement, non-obviousness). (2) “Submitting the SMED as early as possible in prosecution may be advantageous.” (3) “Evidence from disinterested parties may be more persuasive.” (4) Explain which prong of the subject matter eligibility flowchart is being addressed by the SMED. And (5), “Interviews may be helpful to advance prosecution” which addresses general prosecution more than it does SMEDs.
Among these points, the one that might be not always be “best practice” is “Submitting the SMED as early as possible in prosecution may be advantageous.” This point is followed in the memo by an explanation that an applicant can even file a SMED “prior to first action on the merits.” The memo goes on to explain that “this may avoid complications in submitting one later in prosecution and allows the examiner to consider the SMED while initially evaluating subject matter eligibility.” But is submitting a SMED before the first office action really best practice?
Filing a SMED before an application has even been reviewed by an examiner may be inviting a § 101 rejection that may not have been coming. And if there is no § 101 rejection after filing the SMED, the SMED is now on the record and there to be used as proof of invalidity in future litigation. And as anyone familiar with § 101 prosecution will know, the best approach to overcoming a § 101 rejection can vary by the technology center, the art unit, and even by the examiner. Oftentimes, an amendment that only slightly narrows the scope is all that’s needed to overcome a § 101 rejection. Whereas SMEDs can often add time and costs to the prosecution of an application. This all goes to show that there are still plenty of reasons to not file a SMED early.
Director Squires has been focusing on providing ways to overcome § 101 since he took office. This coincides with the current administrations focus on removing barriers to the development of AI technology. As the memo explains, Director Squires authored the appeals review panel decision for Ex Parte Desjardins shortly after taking office in an effort to encourage the allowance of AI-related applications. SMEDs appear to be another tool that the director wants to provide practitioners with to help overcome § 101 rejections as this is the third memo on SMEDs after one in December 2025 and one in April 2026.
While the leadership at the USPTO is placing a clear emphasis on SMEDs, it remains to be seen how effective they will actually be in application. Many examiners and judges may not appreciate SMEDs as much as leadership does. And a recent study by Dennis Crouch shows that this is likely the case with SMEDs failing to overcome § 101 rejections 66% of the time. When working with an examiner that you are already familiar with, it is probably best to rely on approaches that worked previously to overcome the § 101 rejection. But when a § 101 rejection becomes persistent, then SMEDs may be a useful tool to fall back on. While there is limited clarity on what “a showing of good and sufficient reasons” may entail, this new standard might provide an opportunity for practitioners to file a SMED, after a final rejection, once it becomes clear that arguments and amendments will be insufficient. And so while the benefit of SMEDs may be limited, they can be useful for tougher § 101 rejections. And because leadership at the USPTO is taking a friendly stance towards § 101 adverse technologies, this may be an opportune time for applicants to file for such technologies as more tools for overcoming § 101 may be on there way.