SMEDs: Clarify the Rejection Before Preparing the Evidence
Written by Ben Esplin
Dennis Crouch’s recent Patently-O analysis of Subject Matter Eligibility Declarations provides useful early statistics on these submissions. One finding is particularly relevant to prosecution strategy: SMED applications with an examiner interview had a favorable-outcome rate of 42%, compared with 32% without one. After a final rejection, the difference was greater: 41% versus 26%. A favorable outcome meant that the next action allowed the application or dropped the Section 101 rejection.
These figures do not establish that an interview caused the improvement. Nor does the study establish whether the interviews preceded preparation or filing of the declarations. Nevertheless, the association suggests a useful tactical question: should the interview help shape the declaration before it is prepared?
The USPTO’s latest guidance, discussed in last week’s post, encourages early submission of SMEDs—even before an eligibility rejection has been received. But early filing is not necessarily informed filing. For evidence intended to support Step 2A, Prong 2 or Step 2B, a basic question must first be answered: what is being treated as the abstract idea?
As discussed a few posts ago, obtaining a clear and consistent identification at Prong 1 is its own problem. That identification is largely within the examiner’s purview. Without it, evidence concerning a practical application or “significantly more” may be prepared against an abstraction the examiner never adopts. The declaration risks answering a question that has not yet been asked.
The study’s expressly proactive examples are instructive. Both involved prior notice of an eligibility concern, either through prosecution in a related application or an examiner’s remark. Neither was prepared against an entirely unarticulated concern. Technical facts can certainly be collected early. Preparing and filing a targeted declaration is a different matter.
Use the Interview to Shape the Evidence
Once a rejection has been received, an interview can be used for more than repeating the written response. The examiner’s reasoning at Prong 2 and/or Step 2B can be confirmed with specificity, and the proposed subject matter of a declaration can be discussed.
The useful question is not simply whether a declaration would help. It is which factual proposition would matter to the examiner’s reasoning, and what evidence would support it. Would an explanation of a particular technical improvement address the concern? Is the relationship between that improvement and the claim language disputed? Is factual support needed concerning whether particular additional elements, individually or in combination, were well-understood, routine, and conventional?
If particular declaratory evidence is indicated as helpful, preparation should become more straightforward. The factual proposition, its relevance, and the necessary support can be addressed directly rather than inferred from general rejection language.
Specific negative feedback can be equally useful. If the proposed evidence is regarded as insufficiently supported, disconnected from the claims, or directed to the wrong improvement, that feedback supplies a blueprint for preparation. The evidence can be strengthened, supported, or focused to anticipate those objections—not first encounter them in the next Office action.
The objective is not advance approval of the declaration, and an examiner’s objection need not be accepted as correct. The value lies in understanding the objection while the evidentiary submission can still be developed to address it.
Clarify the rejection, discuss the proposed evidence, then prepare and file the declaration. The study does not test that sequence. It does, however, provide a useful reason to consider the interview part of preparing an SMED, rather than merely another event accompanying its filing.