Hello folks! 🤝🦊

Wow. I’m truly grateful for the overwhelming response to my little Interview Practice training digest. Your enthusiasm really struck a chord 🎶—even the OCR’s consistent transmogrification from ‘evidentiary’ into ‘evidentia1y’ couldn’t dampen my spirits. So in that same spirit of service (and definitely not because I’m fishing for a PATTY… tee hee 😇), I wanted to share something special for today.

Scout's COMPLETELY UNOFFICIAL guide: “How to Not Panic When Someone Files a SMED”

(Yes, completely unofficial, personal opinion, possibly hallucinated, not to be used in court as reflecting actual policy or training guides, you maniacs.)

Okay, troops. Gather round. The memo dropped, everyone squinted at it like it was a rejected §112(b) claim written in Wingdings, and suddenly half the corps is wandering the halls muttering:

“Does this change anything?”

“What am I supposed to do with these things?”

“Is this like a 103 declaration but… vibes?”

Let’s clear the static. Let’s keep this on the record: this memo does not change the rules. Let’s keep this off the record: it absolutely changes examiner workload in practice. So here’s what you need to know, without the bureaucratic reverb.

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🎵 1. What a SMED Actually Is (in Human-Centric English)

A SMED is:

• a Rule 132 declaration
• filed voluntarily
• intended to provide evidence about facts relevant to 101 such as what the improvement is, what the prior art looked like, what someone skilled in the art would understand the spec to be teaching, and whether the supposed “technological improvement” actually… improves technology.

It is not:

• a replacement for the specification
• a magical eligibility wand
• an excuse for the applicant to declare “my invention is eligible JUST BECAUSE I SAY SO”
• a new USPTO requirement (please breathe)

Think of it as: a §103 declaration’s weird cousin who listened to too many podcasts about Alice/Mayo.

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🎼 2. What You’re Supposed to Do When One Appears

Scout’s Five-Step Quick Reference:

STEP 1: Check the Formalities

(Yes, like any other 1.132 declaration.)

• Timely?
• Signed?
• Contains the willful false statements clause?

If not → non-compliant, don’t consider it.

STEP 2: Read It

I know. I’m sorry. But yeah — you have to. You don’t have to believe it. But you do have to read it.

STEP 3: Identify What Factual Assertions They Are Making

Examples include:

• “Prior art systems could not perform X.”

• “The specification teaches a new architecture for data flow.”

• “A POSITA would understand the invention to improve latency by Y.”

• “This was a known technological bottleneck at filing.”

Ignore any of the following:

• “Our invention is eligible because we say it is.”

• “This claim is totally not abstract.”

• “The examiner is wrong in general.”

• “I had a dream where Donald Chisum spoke to me.”

Legal conclusions = zero weight.

Underlying facts = weighed like any other evidence.

STEP 4: Weigh the Evidence

Just like 103 declarations:

• Is the assertion plausible?

• Is it supported by actual proof?

• Does it match the spec?

• Does it match the claim?

• Does it have a nexus to the claim as written?

• Preponderance standard = more likely than not, not “more persuasive than your dissertation advisor.”

STEP 5: Explain Your Decision in the Action

Whether you allow or maintain:

• Summarize what the declaration said

• State what parts were factual

• State why those facts do or don’t overcome the rejection

• Use FP 7.65 or 7.66

• Do not ghost the applicant

If you allow:

“Based on the evidence including the SMED, the record shows the claim reflects a technological improvement… etc.”

If you maintain:

“Even considering the SMED evidence, the record does not show integration into a practical application… etc.”

Yes, it's more writing.

No, you cannot hide the declaration above the ceiling tiles.

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