Imagine That IP Law Blog

Subject Matter Eligibility Declarations (“SMEDs”) are declarations submitted under 37 C.F.R. § 1.132 to place factual evidence into the record when responding to a § 101 subject matter eligibility rejection.  On December 4, 2025, the USPTO Director issued a memorandum highlighting SMEDs as a tool for eligibility disputes, particularly where the analysis may turn on technical facts like the state of the art, how a person of ordinary skill in the art would read the specification, or whether the claims reflect a technological improvement. The memorandum does not change § 101 doctrine.  Rather, it emphasizes how examiners should evaluate that evidence and the limits on what declarations can do.  (USPTO Director Memorandum on Subject Matter Eligibility Declarations (Dec. 4, 2025)).

The memorandum’s main contribution is procedural and evidentiary: it underscores that eligibility arguments can be supported with evidence, but that declarations are also subject to familiar limits.  In particular, the evidence must have a nexus to what the claims actually recite; objective assertions must be supported by actual proof; legal conclusions on eligibility are entitled to no weight; and a declaration cannot supply information that should have appeared in the original disclosure.  Those constraints matter most when the SMED is signed only by the inventor, because unsupported inventor testimony risks being treated as advocacy rather than evidence.

The policy concern is not unique to § 101. The Federal Circuit has explained the rationale for requiring corroboration in inventorship-related settings in straightforward terms: “This rule addresses the concern that a party claiming inventorship might be tempted to describe his actions in an unjustifiably self-serving manner in order to obtain a patent or to maintain an existing patent.” Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000). That same concern maps naturally onto inventor-only SMEDs, which often ask the Office to credit an interested declarant’s account of historical technical facts bearing on eligibility.

The corroboration rule has deep roots. In The Barbed Wire Patent, the Supreme Court warned that oral testimony about alleged prior-use devices is inherently suspect because memory fades, recollections become embellished, and self-interest distorts proof. The Barbed Wire Patent, 143 U.S. 275, 284–85 (1892). Eibel Process applied the same skepticism, emphasizing the superiority of contemporaneous records over what it called the “exuberant memory of witnesses” and reiterating that proof resting on long-after recollection without written support is weak evidence. Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 60–61 (1923).

The Federal Circuit translated that skepticism into modern patent doctrine in Price v. Symsek, holding that an inventor’s testimony, “standing alone,” is insufficient on issues such as conception, derivation, and priority, and that corroboration is assessed under a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1193–95 (Fed. Cir. 1993). Related cases extend the same logic to other settings where proof depends on recollections of long-past events.  See, e.g., Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371–73 (Fed. Cir. 1998);  Finnigan Corp. v. U.S. Int’l Trade Comm’n, 180 F.3d 1354, 1367–70 (Fed. Cir. 1999).

The point for SMED practice is straightforward.  A SMED is supposed to establish facts. When those “facts” rest solely on the inventor’s post hoc declaration, the same concerns identified in Singh and Price are immediately present: hindsight, prosecution-driven framing, reconstructed memory, and the absence of independent proof. In that sense, the case law does not create a formal corroboration rule for every § 101 declaration, but it does provide a strong basis to treat an inventor-only SMED with skepticism when it offers little more than self-interested say-so.

The closest Federal Circuit analogue is EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc. There, the court rejected an inventor declaration that amounted to a “naked assertion” unsupported by sufficient context, explanation, or evidence. EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345–48 (Fed. Cir. 2017). At the same time, EmeraChem is important for what it did not hold: it did not require contemporaneous documentary corroboration in every case, and it recognized that circumstantial evidence may sometimes suffice. Still, the court distinguished cases in which the declaration came with more than a conclusory assertion, for example, an attached drawing or an explanatory factual account. The lesson for SMED practice is direct. A declaration that merely states that the claims “improve computer functionality,” “cannot practically be performed in the human mind,” or reflect an “unconventional arrangement” is vulnerable if unsupported by testing, technical analysis, exhibits, or independent factual context.

The memorandum’s treatment of who may sign a SMED reinforces this point. It permits a SMED to be signed not only by an inventor, but also by an inventor’s co-worker, an independent expert, or another person with knowledge of the facts. That feature matters because it shows that the memorandum does not privilege inventor testimony as such; rather, it treats the declaration as a vehicle for facts. The same memorandum also stresses that objective evidence must be supported by actual proof, that the declaration cannot improperly supplement the original disclosure, and that legal conclusions on eligibility are entitled to no weight. By doing so, the memorandum draws a clear line between factual substantiation and mere advocacy, a distinction that is often where inventor-only declarations are most fragile.

Practically speaking, an inventor-only SMED cannot rescue a thin specification. Many successful § 101 positions depend on the application itself describing a specific technological improvement, including how the invention changes system architecture, improves model performance, reduces storage, alters network behavior, or otherwise enhances computer functionality. The memorandum expressly states that a declaration cannot supply information that was required to be present in the original disclosure. If the specification does not actually teach the mechanism of the alleged improvement, an inventor’s later declaration risks looking less like evidence of what the application conveyed at filing and more like post hoc reconstruction. That is exactly the type of after-the-fact narrative the corroboration cases teach tribunals to approach cautiously.

This vulnerability is especially acute when the declaration concerns facts that inherently demand objective support. The same is true for many § 101 showings. If an applicant contends that the claimed invention reduces latency, lowers memory usage, improves retention in a machine-learning model, changes computer operation in a measurable way, or yields a concrete therapeutic or prophylactic effect, those assertions ordinarily should be supported by something more than the inventor’s own characterization, such as benchmarks, test results, source materials, architecture diagrams, laboratory records, or at least third-party corroboration. When such materials should exist but are absent, the declaration begins to look like the evidence rather than a foundation for evidence. Under the corroboration cases, that is a serious weakness.

As a tactical matter, an inventor declaration is most persuasive when it authenticates exhibits, rather than attempting to substitute for them. Price is particularly instructive here because it recognizes that physical exhibits may prove what they show, while testimony about timing, communication, and related historical facts still requires corroboration. Price, 988 F.2d at 1195. Applied to § 101, that means the strongest SMED is usually not a stand-alone inventor narrative. It is a declaration that lays foundation for objective materials, such as comparative testing, contemporaneous design records, diagrams, performance data, source-code excerpts, or other technical evidence, and then ties that material to the claims and to the understanding of a person of ordinary skill in the art.

Ultimately, even a well-supported SMED does not compel the withdrawal of a § 101 rejection. The memorandum directs examiners to consider the declaration on the merits, but then to weigh it with all other evidence of record under a preponderance standard. A SMED therefore enters the evidentiary balance; it does not dictate the result. That point is especially important where the declaration is conclusory or self-serving, because such a declaration may be considered and still be afforded little weight. The memorandum’s own examples underscore that the Office expects objective evidence, nexus, and consistency with the specification before a SMED will rebut a prima facie eligibility rejection.

The Director’s memorandum ultimately offers practitioners an evidentiary mechanism, not a shortcut. Nothing in the memorandum suggests that an inventor-signed SMED is categorically improper, and nothing in the corroboration cases establishes a per se rule that every inventor declaration fails absent documentary corroboration. But the cases do establish a durable principle highly relevant to § 101 practice: when an interested inventor offers an uncorroborated account of technically significant historical facts, tribunals have good reason to be skeptical.

As Singh explained, the concern is that the putative inventor may be tempted to describe events in an unjustifiably self-serving way. Singh, 222 F.3d at 1367. For that reason, the real limitation of inventor-only SMED practice under § 101 is not formal admissibility; it is evidentiary weight. Practitioners who want a SMED to matter should treat the declaration as a wrapper for objective proof, not as a substitute for it, and should seriously consider corroborating witnesses, contemporaneous documents, or an independent expert whenever the declaration asks the Office to credit historical technical facts central to eligibility.