A software patent can die on a motion to dismiss before the defendant files an answer—no claim construction, no discovery, just a judge comparing your claims to Alice and calling them an "abstract idea." Eligibility is far less about what you invented than about how you said it. The path through 35 U.S.C. § 101 is narrow, but it exists, and the difference between patents that survive and patents that die almost always comes down to framing, claim drafting, and prosecution. This checklist gives you the moves. For depth, pair it with patent eligibility after Alice: strategies for protecting software and business-method innovations and the procedural responding to a patent office action checklist.

A quick orientation: § 101 is the first gate—what kinds of inventions can be patented at all—before novelty (§ 102), non-obviousness (§ 103), and disclosure (§ 112). A judicial exception is a judge-made carve-out (laws of nature, natural phenomena, abstract ideas) that cannot be patented no matter how useful. The whole Alice drama is a fight over the abstract idea.

Phase 1 — Run the two-step framework (USPTO version)

  • Step 1: confirm the claim falls in a statutory category (process, machine, manufacture, composition of matter).
  • Step 2A, Prong One: ask whether the claim recites a judicial exception (an abstract idea—mathematical concept, certain methods of organizing human activity, or a mental process—a law of nature, or a natural phenomenon) (MPEP § 2106.04(a)).
  • Step 2A, Prong Two: ask whether the claim integrates the exception into a practical application; if it does, the claim is eligible and the inquiry ends.
  • Step 2B: if not, ask whether the claim adds "significantly more"—an inventive concept, considered individually and as an ordered combination, that transforms the abstraction into a patent-eligible application (Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014); Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)).
  • Keep preemption in view—the policy engine under § 101 is the worry about tying up the basic tools of innovation; narrow, specific claims that leave the field open are your most persuasive theme.

Phase 2 — Win at Step 2A: frame as a technological improvement

  • Identify the technical problem the claim solves and the mechanism by which it solves it.
  • Frame the invention as an improvement to how the computer (or another technology) operates, not a generic computer used as a tool to implement an abstract idea (Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
  • Anchor the claim to a problem "necessarily rooted in computer technology" solved in an unconventional way (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
  • Recite particular rules / a defined process that replaces subjective human judgment and is not a claim to all ways of doing the task (McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
  • Police the level of abstraction: pull the claim down from a stratospheric label ("organizing human activity") to its specific technical limitations—every invention incorporates an exception "at some level."

Phase 3 — Win at Step 2B: an inventive concept grounded in fact

  • Point to a non-conventional, non-generic arrangement of known pieces (BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016))—even conventional pieces can combine into an inventive concept.
  • Recite a specific, unconventional technical step or architecture that is not "well-understood, routine, and conventional."
  • Demand Berkheimer support: whether elements are well-understood/routine/conventional is a question of fact; an examiner asserting conventionality must supply one of the four MPEP § 2106.05(d) categories of evidence (specification statement/admission, an identified court decision, a printed publication, or official notice) (Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)).
  • Traverse any bare official notice to compel a supporting affidavit (MPEP §§ 2106.07(b), 2106.05(d); 37 C.F.R. § 1.104(d)(2)).
  • Remember conventionality is separate from novelty—prior-art subject matter is not necessarily routine.

Phase 4 — Draft claims to match the survivors, not the casualties

  • Capture the technical improvement in the claim language itself—if it's only in the specification, it does not count (Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016)).
  • Recite concrete technical limitations (particular data structures, defined algorithmic rules, specific interface designs, non-generic architectures), not result-oriented language.
  • Avoid the "collect → analyze → display" pattern with no specified technical method (Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
  • Avoid the "do it on a computer" trap—taking a longstanding human practice and adding generic computing adds no inventive concept (Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)).
  • Avoid recasting an ineligible method as a "system" or "computer-readable medium"—the "draftsman's art" will not save it (Alice, 573 U.S. at 226).
  • Keep claims narrow enough not to preempt an entire field.

Phase 5 — Build a supporting specification

  • Describe the technical problem, the prior art's limitations, and how the invention provides a measurable advantage (faster searching, smaller memory footprint, improved security, a result not previously achievable).
  • Provide enough technical detail (architecture, data structures, algorithm steps, pseudocode/flowcharts) that the claimed improvement is supported.
  • Make the specification's improvement statements track the claim limitations so there is no specification-claim disconnect.

Phase 6 — Use USPTO guidance as a sword

  • Cite the 2019 PEG practical-application prong (now in MPEP § 2106) and show how the claim improves a technology or applies the exception with a particular machine.
  • For AI/machine-learning claims, map onto the USPTO's July 2024 guidance update (89 Fed. Reg. 58128, July 17, 2024) Examples 47–49 (neural-network anomaly detection, AI speech-signal processing, AI-assisted medical treatment).
  • Be aware of the AI limit: merely applying conventional ML techniques on generic equipment to a new data environment is not eligible (Recentive Analytics, Inc. v. Fox Corp. (Fed. Cir. 2025))—claim the specific technical improvement, not generic "iterative training."
  • For life-sciences claims, use the "markedly different characteristics" analysis (MPEP § 2106.04(b)–(c)); a claim can be based on a natural phenomenon without being directed to it.

Phase 7 — Plan portfolio and reform-aware strategy

  • Layer protection: pair patents with trade secrets, copyright, and design patents where eligibility is uncertain (see legal protection of software).
  • Prosecute under current doctrine: Alice remains the law as of mid-2026. The Patent Eligibility Restoration Act (PERA) (reintroduced May 2025 as S. 1546) would replace the judicial exceptions but has not been enacted—frame responses under current law while watching for reform.

Common mistakes

  • Putting the technical improvement only in the specification, not the claims.
  • Result-oriented claim language ("determining," "optimizing") with no technical mechanism.
  • The collect/analyze/display pattern without a specific technical method.
  • Arguing eligibility without demanding Berkheimer evidence for conventionality assertions.
  • Treating a system/medium claim as a safe harbor for an ineligible method.

Primary authority

  • 35 U.S.C. § 101. MPEP § 2106 (eligibility), §§ 2106.04–2106.05, 2106.07.
  • Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014); Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012); Bilski v. Kappos, 561 U.S. 593 (2010); Diamond v. Diehr, 450 U.S. 175 (1981); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
  • USPTO 2019 Revised Patent Subject Matter Eligibility Guidance; 2024 AI Guidance Update (89 Fed. Reg. 58128). https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility

This checklist is general information, not legal advice. § 101 doctrine is unsettled and fast-moving—consult a registered patent practitioner.

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