The arrival of the new US Patent and Trademark office (USPTO) Director, John A. Squires towards the end of 2025 has led to a flurry of activity from the USPTO in relation to patent eligibility. For applicants trying to obtain US patent protection for AI or ML inventions it should now be easier to overcome the notorious 101 objection that an invention is too abstract to be patented. This article focuses on two new routes to securing protection:
- The Desjardins case – a landmark precedential decision by the USPTO Appeals Review Panel, ARP, that allows applicants to argue that a problem with an AI or ML model is technical, and not
- Subject Matter Eligibility Declarations (SMEDs) – a declaration tailored to refuting 101 objections.
1. The Desjardins Case
The lead inventor Desjardins is based at DeepMind Technologies, a subsidiary of Google. DeepMind is a prolific filer of AI-related patent applications.
This patent application (US16/319,040) addresses the problem of catastrophic forgetting, which occurs when a model completely overwrites or ‘forgets’ previously learned knowledge during further training or fine-tuning. Unlike typical ‘human’ forgetting, catastrophic forgetting leads to a sudden and complete loss of performance on tasks it was previously able to do well. Furthermore, small amounts of new training data can lead to catastrophic forgetting.
DeepMind’s invention proposes a method for continual learning in which a model can learn to perform new tasks sequentially. Claim 1 of the US patent application can be broken down into the following steps:
- Obtain a model which has already been trained on a first task, and thus has initial parameter values.
- Calculate which specific parameters in the model are the most important for the first task.
- Train the model on a second task, while applying a penalty to discourage the model from changing the identified important parameters too heavily.
By shielding the important parameters, the model retains its ability perform the first task while still acquiring the new knowledge needed to perform the second task.
The 101 rejection and reversal
During prosecution, the USPTO Examiner raised only obviousness objections but when the case was appealed to the Patent Trial and Appeal Board, PTAB, the Board added a new subject matter eligibility (“101”) rejection by applying the renowned “Alice Framework” as summarised below.
The tide turned in late 2025 when the new USPTO Director stepped in. He convened the Appeals Review Panel, ARP, to rehear the case. The ARP considered that by improving the ML model itself, the invention was integrated in a practical application. Thus, the ARP disagreed with the PTAB’s answer to question 2A, prong 2 and found the invention to be eligible.
There is a sting in the tail though: DeepMind did not obtain a granted patent for the invention. Despite overcoming the 101 hurdle, the invention was considered obvious in view of the cited prior art.
Nevertheless, the case was declared precedential in a memorandum (ANC-Desjardins-Memo-12-5-25.pdf) and thus contains important learnings for all attorneys and inventors working in the AI or ML field.
A key factor for the ARP in reaching their positive decision appears to be the explicit disclosure of the technical problem of catastrophic forgetting in the specification. The problem and solution approach has been a feature of the European patent system for decades and is tested thoroughly in our qualifying examinations. European patent attorneys are therefore well placed to assist with drafting patent applications for AI or ML inventions, or performing pre-filing reviews of applications to ensure the problem and solution is clear for both the US and Europe.
2. Subject Matter Eligibility Declarations, SMEDs
A declaration is a voluntary submission which can be used to provide expert testimony to address an objection raised by the USPTO Examiner. Following the Desjardins decision, the USPTO issued another memorandum (Memorandum – Subject Matter Eligibility Declarations) to help both Examiners and applicants adapt this well-established practice to 101 rejections. The memorandum suggests that SMEDs are now best practice when responding to a 101 rejection.
The memorandum highlights that a SMED must contain a clear nexus (connection) between the evidence in the SMED and the specific features claimed in a patent application. SMEDs can further include any of:
- Clarifications as to how the invention of the patent application provides a technical improvement;
- Establishment of the state of the art at the time of filing; and
- Quantitative data supporting the technical benefit of the invention, such as test results.
The memorandum clarifies that a SMED must only address a 101 objection. Thus, declarations to address other objections such as inventive step (obviousness) or clarity (written description) objections, should be submitted separately from the SMED.
There is no change to who can provide the expert testimony. Anyone with knowledge of the relevant facts can sign the SMED. This includes the inventor(s), an inventor’s co-worker or peer who understands the technical aspects of the invention, and/or independent third-party experts.
Key Takeaways
- Explicitly disclose the technical problem and the solution provided by the invention in the specification. This is second nature to European patent attorneys.
- Consider using a SMED in response to a 101 rejection.
If you are developing AI or ML technologies and want to ensure your inventions are protected, both within and outside the US, our team of experts is ready to help. We can aid in drawing out the specific technical features of your innovations to reduce the chances of a 101 rejection. If the rejection is received, we can help draft the necessary SMED. We would be happy to have a confidential discussion with you regarding your intellectual property strategy for your AI or ML innovations.
