US Patent Alert: USPTO Updates MPEP With Recent Subject Matter Eligibility Case Law

On December 5, 2025, the United States Patent and Trademark Office (USPTO) issued an advanced notice of change to the Manual of Patent Examining Procedure (MPEP) (See Advance notice of change to the MPEP in light of Ex Parte Desjardins). This update includes reference to recent precedential Appeals Review Panel decision in Ex Parte Desjardins, which addressed improvements in the functioning of a computer, or an improvement to other technology or technical field, in light of the Federal Circuit’s Enfish, LLC v. Microsoft Corp. ruling.

This memo relates to how examiners should evaluate claims that recite improvements to technology, computer functionality, data structures, learning models, and other applied fields when conducting an eligibility analysis under 35 U.S.C. § 101. The memo discusses updates to the MPEP, emphasizing that examiners must consider the claimed invention as a whole, including any described technological advance, when determining whether the claim integrates a judicial exception into a practical application.

The Patent Office guidance is provided to distinguish subject matter eligibility from patentability, as §§ 102, 103, and 112 remain the primary statutory bases for assessing novelty, nonobviousness, and disclosure requirements. Examiners are advised that eligibility must be evaluated under the existing Alice/Mayo framework, as discussed in the MPEP, informed by the description of any asserted technological improvement in the specification.

This update complements the memoranda issued earlier in the first week of December regarding voluntary Subject Matter Eligibility Declarations (SMEDs) under Rule 132 (See USPTO Issues Dual Memos on Subject Matter Eligibility Declarations: A Strategic Tool for AI and Diagnostic Innovators). While SMEDs are a tool for showing evidence relevant to patent subject matter eligibilit, the MPEP updates and this latest memo address "the examiner’s analytical framework itself, regardless of whether additional evidence is submitted."

Director Squires reiterated that existing law, when applied correctly, is sufficient to protect emerging technologies. These memos are a step toward more predictable and evidence-driven eligibility analysis at the USPTO.

For updates on USPTO policy and practical guidance for patent applicants, follow us or reach out. Questions about patent eligibility or using SMEDs in your patent applications can be directed to admin@usaipr.com.