USPTO Issues New Guidance and Updates the MPEP Following Ex Parte Desjardins

On December 5^th, the USPTO issued new guidance on subject matter eligibility declarations and also updated subject matter eligibility guidance in the MPEP. Each action follows the Ex Parte Desjardins Appeals Review Panel decision. This decision, now designated as precedential, held that improvements to the functioning of machine learning models can constitute practical applications for determining subject matter eligibility.  The decision emphasized that proper consideration should be given to technological improvements reflected in the claims and specification.

On the new guidance, the USPTO issued two new memoranda authored by USPTO Director John A. Squires.  The first memorandum, directed to examiners, explains that Subject Matter Eligibility Declarations (SMEDs) are a voluntary option under existing Rule 132 practice.  Applicants may submit a declaration to provide factual evidence relevant to the eligibility inquiry, such as evidence of technological improvement, the state of the art at the time of filing, or information demonstrating how a judicial exception is integrated into a practical application.  When a SMED is properly submitted, examiners must consider it and evaluate it using the preponderance-of-the-evidence standard.  The memorandum includes several examples illustrating how to consider such evidence.

The second memorandum, directed to applicants and practitioners, outlines best practices for preparing and submitting SMEDs.  It explains that when testimony is being submitted, a separate declaration focused solely on subject matter eligibility should be utilized instead of combining testimony on eligibility and other statutory requirements.  It further explains that SMEDs should provide objective evidence tied to the claimed invention without attempting to supplement the original disclosure. 

The updated guidance in the two new memoranda is effective immediately and additional training materials will follow.  Find the USPTO announcement here.

The USPTO further provided advanced notice of an update to the Manual of Patent Examining Procedure (MPEP) to reflect the decision in Ex Parte Desjardins.  The advanced notice was provided in a memorandum authored by Charles Kim, Deputy Commissioner for Patents.  The update explains how examiners should evaluate claims that recite improvements to technology, computer functionality, data structures, learning models, and other applied fields when conducting an eligibility analysis under 35 U.S.C. § 101.  The updates to the MPEP reaffirm that examiners must consider the claimed invention as a whole, including any described technological advance, when determining whether the claim integrates a judicial exception into a practical application.

The MPEP revisions include the following:

• Updates to §2106 and associated sections to reflect controlling case law on technological improvements. 
• A further explanation of Step 2A, Prong Two and the evaluation of asserted improvements to technology or technical fields. 
• New examples based on the decision in Ex Parte Desjardins addressing applied technologies, computer functionality, structured data processing, and learning systems. 
• A clarification on the examiner’s responsibilities when assessing whether a claim improves technology, and how such improvements may satisfy the eligibility standards.

These changes to the MPEP are effective upon issuance of the advanced notice memorandum and supersede the latest publication of the MPEP.  Find the USPTO announcement here.