"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,"
A prior August memorandum stated that a patent application need not explicitly state an improvement to computer functioning or another technical field, but must describe the invention so the improvement is apparent to one of ordinary skill. Arguing that a specification provides a technical solution to a technical problem can overcome Section 101 rejections. Where the specification does not explicitly describe such an improvement, 37 C.F.R. 1.132 permits submitting declarations and evidence to establish eligibility-related facts as of the filing date. December 4 memoranda urged use of 1.132 declarations while cautioning against supplementing the original disclosure.
Read at Global IP & Technology Law Blog
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