Patent Rejection Appeals

USPTO 101: Understanding the Risks of Subject Matter Eligibility Declarations

The USPTO deserves some credit for recognizing that applicants may at times need an opportunity to explain technical improvements that examiners have failed to appreciate, but there is real risk associated with filing a SMED that should cause practitioners to pause rather than race forward without serious consideration.

And despite some difference of opinion, we all agreed on an essential point: Filing a SMED should not be the first line of defense against an eligibility rejection; it should be treated as a last resort.

Filing a SMED requires serious consideration of the advantages, disadvantages, and alternatives. Examiner interviews, arguments grounded in the existing specification, appropriate claim amendments, and appeals all deserve careful consideration before ever adding sworn statements to the prosecution history.

The question must be whether the declaration supplies something genuinely necessary to advance the case, and even then must be intentionally specific and narrow.

Is your IP advisor educated in this matter?

Written and Posted By Gene Quinn on Oct 27, 2026 04:15 pm

The post USPTO 101: Understanding the Risks of Subject Matter Eligibility Declarations first appeared first on IPWatchdog.com | Patents & Intellectual Property Law.

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