Patent Eligibility Checklist: A Practical Checklist

Document type: Checklist Practice area: Intellectual Property — Patents Jurisdiction: United States (federal) Last reviewed: 5 September 2026

Part 1 — The two-hour screen (per patent)

Read claim 1 aloud. In one sentence, what is this claim about?
Does that sentence describe a business practice, an economic activity, a way of organizing people, a mathematical relationship, or collecting and analyzing information? If yes, there is a motion.
Now read the claim again. What does it actually recite — a mechanism, or a result?
List every element. For each, mark: specific technical mechanism / generic component / functional result.
Does any element require particular hardware, a particular data structure, a particular ordering, or a particular signal or network operation?
Is the claim a method of treatment (life sciences)? If yes, it likely survives.
Is the claim detect-and-correlate (life sciences)? If yes, it likely does not.

Part 2 — Read the specification (the highest-value hour)

Search for and record, with page and line:

"Conventional," "well known," "standard," "commercially available," "any suitable," "as is known in the art."
Statements that a component "may be implemented using any" technology.
A background section describing a business problem rather than a technical one.
Descriptions of the invention purely in terms of what it achieves.
Generic figures: boxes labeled server, database, network, processor.
Incorporation by reference of standard technologies without modification.

On the other side:

A background identifying a specific technical shortcoming of prior approaches.
An explanation of how the invention solves it, at the mechanism level.
Statements that the approach departs from conventional practice.
Data, benchmarks, or comparisons showing a technical improvement.
Pull the file history. Was there a § 101 rejection? What arguments overcame it? Note any Prong Two integration argument (no counterpart in court) and any admissions.

Part 3 — Step one: what is the claim directed to?

Articulate the claim's focus in the words the claim uses.
Test the characterization: does it account for every limitation, or does it ignore some?
Is the focus a specific improvement in the functioning of a computer or another technology?
Or is the technology a tool used to carry out a process that people performed before?
Find Federal Circuit decisions on claims of comparable specificity — in both directions — and chart the asserted claim against them side by side.
Confirm the characterization is tethered to the claim, not to the abstract purpose the invention serves.

The common error on each side: the movant characterizes at too high a level and loses credibility; the patentee relies on the specification's technical detail without showing that the claim recites it.

Part 4 — Step two: is there an inventive concept?

For each additional element beyond the exception:

What is it? A processor, memory, database, network, display, server, formula?
Does the specification describe it as conventional? Quote the passage.
Is it a field-of-use limitation ("in the energy market," "for medical records")?
Is it insignificant pre- or post-solution activity (gathering the data, displaying the result)?

Then, for the ordered combination:

Is the arrangement the ordinary sequence for doing the task?
Or is there a non-conventional, non-generic arrangement that solves a technical problem?
Does the specification explain why the arrangement matters technically?
Is there evidence — prior art, publications, testimony — on whether the combination was standard at the priority date?
Recognize the overlap with §§ 102 and 103, and coordinate the positions.

Part 5 — The Berkheimer question

Does the complaint allege, with specificity, that an element or combination was not well-understood, routine, or conventional at the priority date?
Are those allegations supported by the specification, or are they conclusory?
Does the specification itself resolve the question against the patentee (conventionality admissions)?
If there is a genuine factual dispute, is the pleading stage the right vehicle — or should this be summary judgment?
If proceeding on the pleadings, address the allegations directly rather than ignoring them.

Part 6 — Representative claim and claim construction

Representative claim:

Identify the claim you will treat as representative.
Build a chart mapping the additional limitations of every other asserted claim.
Show that those limitations add only generic components or field-of-use detail.
State affirmatively that the patentee has identified no limitation that changes the analysis.

Claim construction:

Does the eligibility analysis turn on any disputed term?
If the patentee says yes: has it identified the term, proposed a construction, and explained how that construction changes the result? (If not, say so.)
Consider adopting the patentee's construction for purposes of the motion — if the claim fails under the patentee's own construction, the argument ends.
Check the local patent rules and the court's practice on deciding eligibility before construction.

Part 7 — Choosing the vehicle

Rule 12(b)(6) — facially abstract claim, conventionality admissions in the specification, conclusory complaint.
Rule 12(c) — same, where local practice favors it or you want the answer on file.
Summary judgment — well-pleaded complaint, factual disputes to rebut, need for a technical declaration.
Post-grant review under 35 U.S.C. § 321 — only for patents with an effective filing date on or after March 16, 2013, and only within nine months of issuance.
Not an IPR — § 311 limits inter partes review to §§ 102 and 103 grounds on patents and printed publications.
Request a stay of discovery pending the motion.
In multi-defendant cases, coordinate a single motion with co-defendants.

Part 8 — The patentee's pre-suit assessment

Run the defendant's screen on your own patents, honestly.
Score each patent in the family; rank by likelihood of survival.
Assert the claims most likely to survive, not the broadest.
Confirm the asserted claims actually read on the accused product.
Check whether a pending continuation contains more technical claims worth waiting for.
Assess what an adverse decision would do to the rest of the family and to licensing.
Consider the forum's practice on pleading-stage eligibility rulings.

Part 9 — The patentee's complaint

Plead, with specificity and specification citations:

The technical problem the invention addresses.
What prior systems did and why it was technically inadequate.
What the claimed combination does differently, element by element.
That the combination was not well-understood, routine, or conventional at the priority date — and why.
The specific improvement to the functioning of the technology.
Quote or attach the specification passages relied on.
Do not plead conclusions ("the claims recite an inventive concept").
Do not plead what the specification does not support — every allegation is an admission that will be tested.

Part 10 — At the Patent Office

Step 2A, Prong One: argue the claim does not recite a judicial exception at all — not a mathematical concept, a method of organizing human activity, or a mental process.
Step 2A, Prong Two: argue integration into a practical application — an improvement to computer functioning or another technology, application with a particular machine, transformation of an article, or a meaningful limitation beyond linking to a field of use.
Point to specification support for the improvement, and confirm the claim reflects it.
Consider amending to recite the mechanism rather than the result.
Step 2B only if Prong Two fails: argue the elements are more than well-understood, routine, conventional activity, with an affidavit if warranted.
Request an examiner interview.
Understand what allowance does not buy: Prong Two has no counterpart in the judicial framework, and the guidance does not bind courts.

Part 11 — Life sciences

Is there a method-of-treatment claim? Assert it; these have been upheld.
Is the detection technique itself novel and specific, rather than a conventional assay?
Is the claimed composition markedly different from what occurs in nature — cDNA, an engineered construct, a novel reagent?
Is the claim a pure detect-and-correlate claim? Assess candidly; these fail under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012).
For isolated natural products, apply Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013) and Diamond v. Chakrabarty, 447 U.S. 303 (1980).
Consider whether trade secret protection, regulatory exclusivity, or operational advantage is the better protection.

Part 12 — Drafting rules for prosecutors

Specification:

Background states what the field does today, technically.
Background states what is technically wrong with it.
Description explains how the invention changes it, at the mechanism level.
Never write "conventional," "well known," "standard," or "commercially available."
Include data or comparisons demonstrating the technical improvement where available.

Claims:

Recite mechanisms, not results. Test: could a person of skill build it from the claim alone?
Convert functional language ("determining a priority") into mechanism ("computing a priority value as a weighted sum of X and Y").
File claims at multiple levels of specificity.
In life sciences, add the treatment step wherever an intervention exists.
Avoid a claim built entirely from "determining," "analyzing," "processing," "generating," and "displaying."

At allowance:

Write a one-page memo: which claims survive the judicial framework, which relied on Prong Two, what specification language supports unconventionality, what admissions exist, and whether a continuation with narrower technical claims is warranted.

Part 13 — Coordination

With §§ 102 and 103: conventionality evidence overlaps; build both records together and keep positions consistent.
With § 112: functional claiming creates both eligibility and written description problems; brief them together where the same passages do the work.
With claim construction: decide whether to move before or after Markman, based on the district's practice.
With the PTAB: a narrow construction argued to avoid prior art can be quoted against you at step one, and a broad characterization argued for eligibility can be quoted against you at the Board. Assign one person to check every filing across both tracks.
With settlement: price the pending motion on both sides before the ruling.

Part 14 — Fees and the record

Defendant: send an early, specific letter identifying the eligibility problem, citing controlling authority, and offering dismissal without cost. It builds the 35 U.S.C. § 285 record and sometimes ends the case.
Patentee: respond to such letters with a documented analysis. Reasoned disagreement is not exceptional conduct; ignoring a controlling decision may be.
Preserve the eligibility issue for summary judgment and appeal if a Rule 12 motion is denied.
Calendar the appeal deadline; review is de novo on the legal question, clear error on any factual findings.