Director Squires Offers Some Points of Emphasis on Subject Matter Eligibility Declarations

In the latest of his periodic updates concerning Subject Matter Eligibility Declarations (SMEDs), USPTO Director John Squires issued a new memorandum at the end of September. The new memorandum, issued along with a flowchart, supplements the Director’s April 2026 memorandum on SMEDs, which superseded his original December 2025 memorandum. (I discussed the 2025 memorandum in an earlier piece.)

The new memorandum, which by its terms “does not announce any new USPTO practice or procedure,” nonetheless highlights some points of practice regarding SMEDs and how they are considered by Examiners. First, the flowchart emphasizes that SMEDs have more probative value when presenting objective evidence (as opposed to opinions, which are entitled to less weight, or mere allegations, which are weightless in an evidentiary sense).

Also, with regard to probative value, the new memorandum indicates that declarations from disinterested parties may entitled to more weight than those from interested parties. These first two points echo what is stated in MPEP 716.01(c)(III) with regard to evidentiary declarations generally.

An interesting aspect of the flowchart is that it indicates that a SMED supplying information that should have been present in the original disclosure is given “lower or no probative value.” This is perhaps in tension with the statement in the earlier memos “that SMEDs must not improperly supplement the specification,” which suggests that no consideration will be given for supplementary information that should have been part of the original application disclosure.

Finally, the flowchart indicates subject matter eligibility should be decided based on a preponderance of the evidence, and that a “50/50 split should be decided in favor of the applicant.”  This suggests a balancing of the SMED evidence against something, but what exactly? It brings to mind a passage in the April 2026 memo:

We have received several suggestions of a technical nature that longstanding MPEP 716.01(c)(III) may not describe the full import of a declaration as evidence. As such, commentators have suggested declarations do not have to 'persuade' and unless the examiner finds contrary evidence, are not per se 'weighed.' We are taking this feedback under advisement and reviewing whether this MPEP section would benefit by an update. For SMED Declarations, note that SMEDs are intended to provide a 'window' as to how a person of ordinary skill in the art would interpret the specification as to the practical application of the inventions claimed. We will keep you advised.

It looks like those “suggestions of a technical nature” are still under consideration by the USPTO.

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