USPTO Patent Eligibility Guidance: What To Review In Pending Technology Applications

QUICK ANSWER: Technology companies should review pending patent applications against current USPTO eligibility guidance before choosing their next prosecution move. The review should connect each claimed technical improvement to its original description in the disclosure and the evidence supporting the claimed improvement. An eligibility declaration can be used to explain the connection as evidenced in the record, but the declaration cannot supply disclosure missing from the application as filed [1, pp. 2 to 3].

What changed in USPTO patent eligibility guidance?

The USPTO has clarified how examiners are to assess technological improvements and how applicants can present evidence supporting eligibility when challenged ². For pending technology applications, we recommend reviewing the claims and the description of the technology before choosing a response path.

The Desjardins memorandum dated December 5, 2025 updated the Office's treatment of improvements to computer functionality and other technologies ³. The memo requires the claims to include the components or steps producing the disclosed improvement [3, pp. 2 to 3].

A memorandum dated April 30, 2026 replaces the December 2025 applicant-facing best-practices  memorandum and supports Applicant use of subject matter eligibility declarations, or SMEDs [4, p. 1]. However, the 2026 memo is said to make no substantive changes to the 2025 examiner memorandum or updated MPEP guidance are intended [4, pp. 2 to 3].

These memoranda are intended to guide examination; not replace Section 101 or erase pending eligibility rejections ². For outstanding Office actions, ask whether this guidance changes the best way to respond.

Which pending applications deserve attention first?

Start with commercially relevant applications facing eligibility objections but that have original description that explains a technical improvement (technical effect) associated with the responsible claimed process or apparatus. We recommend a claim-by-claim review with the engineers and prosecution team.

The Desjardins memorandum offers a useful example: learning new tasks while protecting knowledge of earlier tasks that improve machine-learning operation [3, pp. 2 to 4]. The Office's analysis considers the claimed parameter adjustments that are explained in the specification's description of the claimed improvement [3, p. 2].

Consider a hypothetical application involving industrial sensors, and ask whether the claimed process aligns with a described reduction in redundant data processing. A suitable business benefit (technological improvement) stated in the specification is identified as simply cheaper monitoring, a feature that should lead to questions as to whether the technical cause(s) are claimed.

Build a short review list:

• Commercial role: Which product, licensing position, or competitive feature would the claims protect?
• Disclosure support: Where does the original application explain the technical mechanism?
• Claim coverage: Which pending claims require that mechanism?
• Next action: Would argument, amendment, evidence, or an examiner interview best address the rejection?

When can a Rule 132 eligibility declaration help?

A Rule 132 eligibility declaration can provide facts explaining how a skilled person would understand the disclosed technical improvement [1, pp. 2 to 3]. We recommend using one when a factual explanation can resolve a gap in the prosecution record. Avoid a declaration that merely repeats the arguments of the response.

SMEDs are voluntary, and applicants cannot be penalized for declining to submit one [1, p. 2]. The April 2026 memorandum recommends a separate eligibility declaration, while acknowledging that combining testimony on multiple statutory issues remains permissible [4, pp. 2 to 3].

Useful evidence might explain the state of the art at filing, the technical improvement, and its connection to particular claims [1, pp. 2 to 3]. That connection gives the evidence its heft: the factual weight supporting the argument.

Identify the declarant's knowledge, the comparison being made, and the claimed features responsible for the difference. Separate observed test results from assumptions. Legal conclusions alone receive no evidentiary weight; however, their stated factual basis may be persuasive [1, pp. 2 to 3].

What cannot be repaired after the application is filed?

A declaration cannot supply needed information absent from the original disclosure, and amended claim limitations require support in the original application as filed [1, p. 2], [5]. Review that boundary before commissioning evidence or rewriting claims. A persuasive technical story must remain tied to what was disclosed.

An amendment's support can be express, implicit, or inherent; exact matching words are not always required [5, §§ 2163.05 to 2163.06]. Unsupported claim limitations can create a written-description problem [5, § 2163.06].

Consider a hypothetical application describing generic image classification. The team later develops a new memory-management technique that speeds inference. Do not assume a declaration can add that later technique to the original disclosure.

For a proposed amendment, determine whether there is supporting description in the specification, drawings, or original claims.

Before approving an amendment, test its commercial effect too. A claim that better describes the engineering should still cover a feature worth protecting.

What should the prosecution review produce?

The review should produce a decision for each application, with a claim-support map, evidence plan, and next prosecution step.

Use this pending-application checklist:

• Claim-support map: Match each proposed technical limitation to the original disclosure.
• Eligibility position: Explain how the claim reflects the asserted technological improvement.
• Evidence choice: Identify a factual dispute that a declaration could help resolve.
• Other rejections: Review novelty, obviousness, and disclosure issues separately.
• Business coverage: Check whether the proposed claims still protect the company's intended use.
• Docket and budget: Confirm response dates, procedural options, and the cost of the recommended path.

Finally, success on eligibility does not resolve every patentability issue: Desjardins remained subject to an obviousness rejection after the eligibility ground was vacated [6, p. 10].

Footnotes

^{1. U.S. Patent and Trademark Office, “Subject Matter Eligibility Declarations,” memorandum to the Patent Examining Corps, December 4, 2025. USPTO examiner memorandum (https://www.uspto.gov/sites/default/files/documents/smeds-corps.pdf).}

^{2. U.S. Patent and Trademark Office, “Subject matter eligibility,” examination-policy guidance and resource page. USPTO eligibility guidance (https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility).}

^{3. U.S. Patent and Trademark Office, “Advance notice of change to the MPEP in light of Ex Parte Desjardins,” December 5, 2025. USPTO Desjardins memorandum (https://www.uspto.gov/sites/default/files/documents/memo-desjardins.pdf).}

^{4. U.S. Patent and Trademark Office, “Best Practices for Submission of Rule 132 Subject Matter Eligibility Declarations (SMEDs),” April 30, 2026, superseding the December 4, 2025 applicant-facing best-practices memorandum. USPTO applicant and practitioner memorandum (https://www.uspto.gov/sites/default/files/documents/smeds-application-practitioners-4302026.pdf).}

^{5. U.S. Patent and Trademark Office, Manual of Patent Examining Procedure, § 2163, “Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph, ‘Written Description’ Requirement,” including §§ 2163.05 and 2163.06. MPEP § 2163 (https://www.uspto.gov/web/offices/pac/mpep/s2163.html).}

^{6. U.S. Patent and Trademark Office, Appeals Review Panel, Ex parte Desjardins, Appeal No. 2024-000567, rehearing decision, September 26, 2025. Appeals Review Panel decision(https://www.uspto.gov/sites/default/files/documents/202400567-arp-rehearing-decision-20250926.pdf).}