Despite the prominence of AI and blockchain innovations, the United States Patent and Trademark Office continues to question whether computer-based inventions qualify as patentable subject matter. Patent Eligibility Challenges Over ten years ago in 2014, the Supreme Court’s decision in Alice Corp. v. CLS Bank International, redefined the test for patentable subject matter (§ 101 of the patent law). A § 101 rejection (sometimes now also called an Alice rejection) arises when a patent examiner determines that the claimed invention is directed to ineligible subject matter, such as an abstract idea, a law of nature, or a natural phenomenon, and lacks an “inventive concept” that transforms it into a patent-eligible application. The redefinition for the test for eligibility triggered a surge of new rejections, making it increasingly uncertain if applicants could secure patent protection in certain computer related fields such as AI, machine-learning, blockchain, fintech, and data-processing. Examiners often characterize innovations in computer-based fields as abstract ideas merely implemented on generic computer technology and, as such, patent ineligible. To overcome such rejections, it is necessary to demonstrate that the claims recite a specific technological improvement or include additional features that meaningfully limit any recited abstract idea. Over the past eleven years, overcoming these patent eligibility rejections has remained a significant and ongoing challenge as there is no well-defined path or language that can definitively be used to prove claims provide the required technological improvement or additional features. Expert Declarations: Past and Present Patent attorneys have attempted to provide such proof using the declaration of an expert. The patent office had specific procedures for submission of expert declarations but no clear indications if they could be used to overcome a § 101 rejection. In 2022, the Federal Circuit addressed this procedure in its decision from International Business Machines Corp. v. Zillow Group, Inc. The decision limited the usefulness of such a declaration as the court affirmed a rejection under § 101 concluding that expert declarations submitted to provide proof of eligibility were insufficient to establish a patentable inventive concept. However, on December 4, 2025, the USPTO Director issued a new memorandum to the Patent Examining Corps reminding examiners and practitioners that expert declarations may be submitted specifically to address § 101 rejections. A key element of the memorandum is that it calls out the need for examiners to meaningfully consider such declarations and that examiners must provide specific written discussion on why such a declaration does, or does not, provide enough evidence to overcome the § 101 rejection. The Director also provided specific examples of declarations that would be considered sufficient to overcome a § 101 rejection with regard to certain computer-based inventions and, specifically, an AI training model. The Director’s memorandum appears to be a call to applicants to submit expert declarations when faced with a § 101 rejection and that examiners need to give them serious consideration when they are presented. If you have questions about patenting computer-based inventions, navigating Section 101 rejections, or when and how to obtain and use expert declarations in patent filings, please contact a member of our Intellectual Property team.
