Readers will recall that the Deputy Commissioner for Patents issued a memorandum on evaluating patent claims for subject matter eligibility in August, which we blogged about previously. The August 2025 Memorandum noted that a patent application “does not need to explicitly set forth the improvement [to the functioning of a computer or to another technology or technical field], but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art.”
In responding to rejections under Section 101 for ineligible subject matter, it is often useful to be able to argue that the Specification describes a technical solution to a technical problem that constitutes an improvement to the functioning of a computer or to another technology or technical field. In instances in which the specification does not explicitly set forth an improvement to the functioning of a computer or to another technology or technical field, and such an argument is not explicitly supported by the Specification, 37 C.F.R. 1.132 provides an avenue to provide additional evidence to establish the eligibility of claims under Section 101.
On December 4, Director Squires issued two memoranda – one to applicants and practitioners, and one to the Examining Corps – related to the use of declarations under 37 CFR 1.132, referring to it as “an underutilized path to proffer evidence to establish subject matter eligibility of the claimed invention.”
In the Examining Corps Memo, Director Squires emphasized that subject matter eligibility declarations cannot be used to improperly supplement the original disclosure but may be used to establish facts as of the filing date of the claimed invention. In proffering an evidentiary declaration related to subject matter eligibility, the limitation on the content of such a declaration means that the declaration may not add to the disclosure but may only establish facts as of the filing date of the claimed invention.
The Examining Corps Memo indicates that a subject matter eligibility declaration can provide facts that describe (i) the state of the art at the time of filing, (ii) objective evidence describing an improvement to the state of the art, or (iii) a factual basis for determining that a skilled artisan would have concluded that the invention recited in the claims reflected an improvement to the underlying technology.
It is worth noting that the Examining Corps Memo explicitly states that applicants are not required to file subject matter eligibility declarations when applicants are aware at the time of filing of evidence that is favorable to eligibility; rather, applicants are strongly encouraged to include such evidence in the specification itself. This comports with our general preference for describing some form of technical benefit and technical solution to a technical problem in the Specification. Accordingly, subject matter eligibility declarations may be most useful in older cases where evidence of a technical benefit may not have been explicitly described in the application.
The Applicant and Practitioner Memo reminds applicants and patent practitioners that declarations under 37 CFR 1.132 are available to allow for the submission of objective evidence relevant to patent eligibility. The Applicant and Practitioner Memo also indicates that when declarations are provided to address multiple statutory requirements, it is preferable for applicants to provide separate declarations for subject matter eligibility-related evidence and for statutory matters (e.g., rejections under Sections 102, 103, and/or 112). These memoranda appear to be an attempt to encourage applicants who are encountering rejections under Section 101, especially in older applications that may not have been drafted with a robust focus on describing technical problems and technical solutions.
