Written: Milo Eadan
For several years, artificial intelligence (AI) related patent applications have faced heightened scrutiny under U.S. patent eligibility law (35 U.S.C. § 101). The recent precedential Patent Trial and Appeal Board (PTAB) decision in Ex Parte Desjardins and the subsequent USPTO memoranda signal a meaningful policy clarification: AI inventions may be patent-eligible, even those demonstrating technical improvements to machine learning systems themselves. For companies investing in AI R&D, this reduces uncertainty and provides a clearer drafting and prosecution roadmap.
New guidance codifies Ex Parte Desjardins and cements the USPTO’s policy clarification to increasingly encourage AI patent eligibility. A rare policy statement in the Desjardins appeal decision made this explicit:
“Categorically excluding AI innovations from patent protection in the United States jeopardizes America’s leadership in this critical emerging technology” (Ex parte Desjardins, Appeal No. 2024-000567 p. 9, (PTAB Decision September 26, 2025))
Acting USPTO Director John Squires authored and made precedential Desjardins to compel all Examiners and PTAB judges to enforce this policy. Two memos were issued in Desjardin’s wake, a day apart, on December 4 and 5, 2025, to provide a roadmap for how Applicants can patent AI inventions. Those memos confirm patent eligible bases for improvements include “reduced storage,” “reduced system complexity,” “streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks” (i.e., learning without forgetting) (MPEP § 2106.04(d), citing Appeal 2024-000567 Decision p. 9), and “improvements in computational performance, learning storage, data sets, and structures” (Dec. 4, 2025 Memo).
The memos outline different paths to patent eligibility:
Plan A – Drafting for Eligibility (December 5 Memo)
The December 5 memo codifies Desjardins in the MPEP. It outlines a first line of defense – Plan A – to patent AI inventions that preempt patent eligibility rejections at the drafting phase. The memo gives what may be called the Dejardins formula:
Specification disclosed improvement + reflected in claims = Patent-Eligible.
The memo states: “the specification identified the improvement to machine learning technology … and that the claims reflected the improvement identified in the specification” (MPEP § 2106.04(d)(1), second paragraph).
In plain terms, the patent application must clearly link features to a technical improvement, and the claims must expressly recite those features the Specification linked to achieve that improvement.
The Specification disclosure is sufficient if it is more than “only in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art)” (id.). This means the application must include technical detail—such as architecture, parameter updates, data structures, or algorithmic steps—so that an AI engineer of ordinary skill would understand how the improvement is achieved. Conclusory statements that the invention is “better” than prior solutions are insufficient.
Claims reflect the improvement when “the claim includes the components or steps of the invention that provide the improvement described in the specification” (id.). For example, if the improvement is a specific neural network architecture that reduces memory usage, the claims must recite that architecture—not merely the desired result.
Additionally, the December 5 memo added two new patent eligible AI examples to the MPEP:
xiii. “An improved way of training a machine learning model that protects the model’s knowledge about previous tasks while allowing it to effectively learn new tasks”; and
xiv. “Improvements to computer component or system performance based upon adjustments to parameters of a machine learning model associated with tasks or workstreams”.
Critically, both of these examples focus on improvements to the internals machinations of the AI system itself, and not on an external or downstream consequence of it.
Plan B – Subject Matter Eligibility Declarations (December 4 Memo)
The December 4 memo outlines a fallback path —Plan B —to AI patent eligibility, when the Dejardins standard (Specification + claims alignment) is not met. This memo introduces a new tool – the subject matter eligibility (SMED) declaration: a sworn expert declaration explaining why a AI practitioner or ordinary skill would understand the invention as a technological improvement:
“a SMED may demonstrate how one of ordinary skill in the art would interpret a specification that describes a technological improvement to show that the claimed invention is patent eligible subject matter” (Dec. 4 Memo, p. 3).
A SMED cannot “improperly supplement the specification” (id. p. 4) or add new technical details that were not disclosed in the specification, but may clarify what the existing disclosure means from a technical perspective by supplementing evidence to show the perspective of a Person of Ordinary Skill in the Art (POSA). A SMED may explain how a POSA would interpret the specification to reach a conclusion that the Desjardins standard is met. Examples of SMED evidence include:
“explaining that the claim limitations cannot practically be performed in the human mind” (id. p. 4),
“objective comparative testing” showing superior performance of the claimed NN architecture over prior are NNs (p. 5),
“expert testimony along with trade magazine articles to establish the state of the art at the time of filing” (p. 6), and more.
This type of evidence may help demonstrate that the invention improves computer technology itself and is not, for example, merely an abstract idea such as a mathematical concept or mental process.
With these two paths—Plan A (proactive drafting) and Plan B (SMED support)—Applicants have concrete guidance as to how to patent AI inventions.
While it remains to be seen just how Examiners and the PTAB will apply this guidance in practice, Desjardins provides a structured framework that meaningfully reduces uncertainty for AI innovators.
For further reading:
Ex parte Desjardins, Appeal No. 2024-000567 (PTAB Decision Sept. 26, 2025)
https://www.uspto.gov/sites/default/files/documents/202400567-arp-rehearing-decision-20250926.pdf
USPTO Memorandum: Advance notice of change to the MPEP in light of Ex Parte Desjardins (Dec. 5, 2025):
https://www.uspto.gov/web/offices/pac/mpep/ANC-Desjardins-Memo-12-5-25.pdf
USPTO Memorandum: Subject Matter Eligibility Declarations (SMEDs) (Dec. 4, 2025):
https://www.uspto.gov/sites/default/files/documents/smeds-corps.pdf
