For the patent practitioner who represents clients whose patent applications get rejected over Section 101, some new tools have recently been added to the practitioner’s toolbox that might help with overcoming the rejections.
Back in the days before Covid, when a practitioner could expect to conduct in-person interviews with Examiners at the Alexandria campus of the USPTO, there was an odd sight to see in some Art Units. You might pass through a set of offices of Examiners belonging to some particular Art Unit, and taped to the door of each office would be a piece of paper with a number on it. The number might be zero or one, but would more likely be a number bigger than one hundred. You might catch on that this particular Art Unit was an Art Unit that tended to get lots of software-related patent applications.
If you were friendly with one of the Examiners in such an Art Unit, you might learn that the number on an Examiner’s office door represented the number of days since the last time that the Examiner had allowed a (software-related) patent application. Yes, in such an Art Unit, there was a competition among the Examiners to see who could go the longest without allowing a (software-related) patent application. And the chief line of attack in rejecting the software-related patent applications was Section 101.
Covid having happened, and work-from-home having happened, and many other things having changed at the USPTO during the past year or so, it is vanishingly rare nowadays in 2026 to get an in-person interview with an Examiner. So nowadays a practitioner would not be likely to get to see whether there are still numbers like this taped to office doors in Art Units that are hostile to software patent subject matter. But practitioners in 2026 whose clients apply for patents on software subject matter (including large language models, and deep neural networks, and machine learning) certainly face continued hostility toward such subject matter from many Examiners. In 2026, some Examiners routinely continue to use Section 101 to reject any and all such software-related patent applications.
Having said this, there have been some recent developments at the USPTO that offer new tools in the responding-to-office-actions toolbox that might help to overcome such Section-101 rejections. In this blog article I enumerate some of the new tools.
August 4, 2025 – the “Reminders” memorandum (blog article). The USPTO’s Deputy Commissioner for Patents (Charles Kim) published a memorandum directed to Technology Centers 2100, 2600 and 3600, telling Examiners not to do so many Section-101 rejections.
Conspicuously missing from the memorandum is any explanation from Deputy Commissioner Kim as to why he directed his memorandum to only three of the nine Technology Centers. I guess I can understand why he would not direct it to Tech Center 2900 (“Designs”) but many applicants are running into routine Section-101 rejections from these five Tech Centers to which Deputy Commissioner Kim did not direct his memorandum:
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- 1600 – Biotechnology and Organic
- 1700 – Chemical and Materials Engineering
- 2400 – Computer Networks, Multiplex, Cable and Cryptography/Security
- 2800 – Semiconductors, Electrical and Optical Systems and Components
- 3700 – Mechanical Engineering, Manufacturing and Products
September 26, 2025 – the ex parte Desjardins decision (blog article). The Appeals Review Panel issued a decision telling the TTAB not to impose and affirm so many Section-101 rejections.
December 4, 2025 – the SMEDs memoranda. USPTO Director John Squires issued a first memorandum dated December 4, 2025 and directed to applicants and practitioners, coining a new acronym “SMEDs”. A SMED, we learn, is a “Subject Matter Eligibility Declaration”. The idea is that if an Examiner has made an unjustified Section-101 rejection, the applicant ought to arrange for an inventor or some other person to prepare and sign a Rule-132 declaration to push back on the rejection.
This first memorandum has an Appendix A, being a second memorandum, also dated December 4, 2025, this one directed to the Examining Corps, telling Examiners that they ought to pay attention to a SMED if an applicant files a SMED in response to a Section-101 rejection.
December 5, 2025 – advance notice of change to the MPEP in light of ex parte Desjardins. Deputy Commissioner Kim issued a memorandum explicitly amending Section 2106 of the Manual of Patent Examining Procedure as of December 5, 2025 to incorporate several of the teachings of ex parte Desjardins.
In recent times I have handled increasing numbers of patent applications involving large language models, deep neural networks, machine learning, artificial intelligence, and software generally. It is pretty much routine that every such case gets rejected on Section-101 grounds. And in recent weeks I have found myself making use of all of these newly added tools in the toolbox for pushing back on Section-101 rejections. In a response to an Office Action, I find myself attaching a copy of the “Reminders” memorandum, the ex parte Desjardins decision, the second SMEDs memorandum, and the advance notice of change to the MPEP memorandum.