Eligibility now runs on two tracks

What cannot be patented

Section 101 lists broad categories, but the courts have carved out three exclusions: laws of nature, natural phenomena and abstract ideas (Alice). The question of whether a claim stays clear of them is called subject matter eligibility, or just eligibility.

How the courts ask the question

Alice sets a two-step test. First, is the claim directed to one of the excluded concepts? If so, what else in the claim supplies an "inventive concept"? The opinion says "wholly generic computer implementation" does not.

A few examples show where lines fall. Isolated natural DNA is ineligible, while cDNA, a synthetic copy, is eligible (Myriad). The machine-or-transformation test, which asks whether a process is tied to a machine or changes something, is a useful clue but not the sole test (Bilski).

How the USPTO asks the question

The USPTO, the US Patent and Trademark Office, breaks the analysis into stages: Step 1, Step 2A Prongs One and Two, and Step 2B (USPTO memo). Examiners use those steps, and the Office issues its own guidance on applying them.

That guidance does not bind courts (2024 USPTO AI update). This is why the lesson speaks of two tracks. An examiner may allow a claim, and a judge may later strike it down. A granted patent has cleared the first reader, not the second.

What to do about it

In our judgment, you should write for the stricter reader, whichever one that is at the time. Three habits help:

• Describe the concrete technical problem and how your invention improves on earlier approaches.
• Claim how the result is achieved, not only the result itself.
• Avoid claims that amount to a known idea plus a generic computer.

Think of an application that says only that software predicts customer demand. That states a goal. An application that explains a specific change to how a system processes data, and what that change does better, gives both readers something concrete to assess.

The dated section below shows how far the two tracks have separated. In our judgment, this is one of the fastest-moving areas in this course, so check it often.