Prosecuting and Defending a Section 101 Challenge: A Practical Guide

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

An eligibility motion is unlike any other patent motion. It is decided on the claim language and the specification, usually without prior art, often without construction, and sometimes before the defendant has answered. It costs a fraction of what any other dispositive motion costs. And when it works, the case is over in four months instead of three years.

That asymmetry drives the strategy on both sides. Defendants screen for it first. Patentees who have not thought about it before filing find out in the answer.

This guide walks the work in the order it actually gets done.

PART ONE — THE DEFENDANT'S FIRST TWO WEEKS

Step 1: Screen every asserted patent

The screen takes a few hours per patent and it determines the shape of the case.

Read claim 1 out loud and ask: what is this claim, in substance, about? If the answer is a business practice, an economic activity, a method of organizing people, a mathematical relationship, or collecting and analyzing information, you likely have a motion.

Then ask the harder question: what does the claim actually recite? A claim that recites a specific technical mechanism — particular data structures, particular ordering, particular network topology, particular signal processing — is much harder to characterize as abstract, even if it operates on information.

Score each patent:

Step 2: Read the specification for admissions

This is the single highest-value hour in the screen, and defendants routinely skip it.

What you are looking for:

• Statements that a component, step, or technique is conventional, well known, standard, commercially available, or can be implemented using any suitable technology.
• Background sections that describe a business problem rather than a technical one.
• Descriptions of the invention purely in terms of what it achieves rather than how.
• Incorporation by reference of standard technologies without modification.
• Figures showing generic boxes labeled "server," "database," "network."

Why it matters. [*Berkheimer*](https://uplaw.us/documents/usc/35-usc-sect-101--inventions-patentable--ae85c8943c7e2650 — see the companion article) makes conventionality a potential factual question. A specification that says the components are conventional resolves that question against the patentee out of its own mouth, which is why courts distinguish Berkheimer on exactly this ground.

Pull the file history too. A § 101 rejection during prosecution — and the arguments made to overcome it — tells you how the applicant characterized the invention and may contain admissions or a Prong Two integration argument that has no analogue in court.

Step 3: Decide the vehicle and the timing

Rule 12(b)(6), before answering. Fastest and cheapest. Appropriate where the claim is facially abstract, the specification contains conventionality admissions, and the complaint does not plead unconventionality with specificity.

Rule 12(c), after the pleadings close. Similar analysis, useful where you want the answer on file or where local practice discourages pre-answer motions.

Summary judgment. The right vehicle where the complaint pleads facts you must rebut, where you need a technical declaration on conventionality, or where the court has signaled it will not decide eligibility on the pleadings. More expensive, more reliable when the pleading is well drafted.

In a parallel PGR. Available only for patents with an effective filing date on or after March 16, 2013 and only within nine months of issuance under 35 U.S.C. § 321. Rarely available in practice, because most asserted patents are older. Note that eligibility cannot be raised in an IPR under § 311.

Timing considerations:

• Local patent rules may set a schedule that discourages early dispositive motions, or may require a stay of discovery pending an early motion. Check before assuming.
• Multi-defendant cases benefit from a coordinated motion — one brief, shared costs, and a single result.
• A stay of discovery pending the motion is worth requesting; the cost saving is the point of the motion.

PART TWO — BRIEFING THE MOTION

Step 4: Choose and justify the representative claim

Courts allow a defendant to address a representative claim where the claims are substantially similar and linked to the same abstract idea. Do the work.

In the brief:

• Identify the representative claim.
• Explain why the other claims are substantially similar — a short chart mapping the additional limitations of each claim and showing they add only generic or field-of-use detail.
• State affirmatively that the patentee has not identified any limitation in another claim that changes the analysis.

Why this matters. The most common patentee response is that the defendant addressed only one claim. A chart forecloses it, and it shifts the burden to the patentee to identify a specific limitation that matters — which, if the claims really are similar, it cannot do.

Step 5: Handle claim construction

Do not ignore it. The patentee will argue construction is required.

Three approaches, in order of preference:

1. Argue construction is unnecessary because the eligibility analysis does not turn on any disputed term, and the patentee has not identified one that would change the outcome.
2. Adopt the patentee's proposed construction for purposes of the motion. If the claim fails under the patentee's own construction, the argument is over. This is the cleanest and most persuasive posture.
3. Propose a construction only where you must, and explain why the analysis fails under any reasonable construction.

What the patentee must do to make construction matter: identify the term, propose a construction, and explain specifically how that construction changes the step-one or step-two result. A generic assertion that construction is required is routinely rejected.

Step 6: Write step one properly

Frame the claim at the level the claim itself supports. Overreaching hurts. A characterization of a specific video-encoding claim as "directed to compressing data" invites the court to find the characterization untethered from the claim language, and it costs credibility on step two.

The structure that works:

• Quote the claim in full.
• Identify what each limitation does.
• Show that the limitations, taken together, describe a result or a process rather than a mechanism.
• Compare to Federal Circuit cases holding similar claims abstract, with the claim language quoted side by side.
• Address the patentee's likely framing directly: yes, the specification describes a technical context, but the claim recites only functional steps.

Use claim-to-case comparisons, not doctrinal recitation. Judges deciding these motions read a great many step-one arguments. What distinguishes a good brief is a side-by-side chart showing the asserted claim next to a claim the Federal Circuit held abstract, with the parallels marked.

Step 7: Write step two properly

Address the elements individually and as an ordered combination. Courts note when a brief does only the first.

For each additional element, state what it is and why it adds nothing: a processor, a database, a network connection, a display. Cite the specification where it describes the element as conventional — this is the payoff from Step 2.

Then address the ordered combination. The patentee will argue the arrangement is unconventional. Explain why the sequence is the ordinary order of doing the task, or why the specification itself describes it as standard.

Anticipate Berkheimer. If the complaint or specification raises a conventionality question, address it: either show the specification resolves it (admissions), or argue that the allegation is conclusory and unsupported by the specification, or acknowledge the dispute and move for summary judgment instead.

PART THREE — THE PATENTEE'S SIDE

Step 8: Assess eligibility before you file suit

The worst outcome in eligibility practice is a published decision invalidating claims you could have avoided asserting.

Run the defendant's screen on yourself. Read claim 1 aloud. Read the specification for admissions. Pull the file history. Score each patent honestly.

Then choose what to assert. Assert the claims most likely to survive, not the broadest. A narrow claim that reads on the accused product and recites a specific mechanism is worth more than a broad claim that will be dismissed.

Consider the portfolio consequence. An adverse decision affects every continuation, every related patent, and every licensing conversation. If the family's strongest claims are in a pending continuation, consider waiting.

Consider the forum. District practice varies meaningfully on whether eligibility is decided on the pleadings and how readily Berkheimer disputes are found. This is a legitimate venue consideration.

Step 9: Plead the facts

A complaint that recites infringement and attaches the patent is a complaint that invites a Rule 12 motion. A complaint that pleads eligibility facts is materially harder to dismiss.

What to plead, with specificity:

• The technical problem the invention addresses, described technically.
• What prior systems did and why it was inadequate — cite the specification's background.
• 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, with citations to the specification and, if available, to contemporaneous evidence.
• The specific improvement to the functioning of the technology.

Two cautions. First, do not plead conclusions: "the claims are directed to a technological improvement and recite an inventive concept" is worth nothing. Plead facts. Second, everything you plead is a judicial admission and will be tested; do not plead what the specification does not support.

Attach or quote the specification passages you rely on. A court reading the complaint should be able to see the factual dispute without hunting.

Step 10: Oppose the motion

Attack the framing at step one. The defendant will characterize the claim at a high level of abstraction. Your job is to show the characterization is untethered from the claim language.

• Quote the claim.
• Identify the specific limitations the defendant's characterization ignores.
• Show what those limitations require technically.
• Cite Federal Circuit cases where similar specificity carried the claim past step one, with side-by-side comparison.

Establish the Berkheimer dispute at step two. Identify the specific element or ordered combination you contend was unconventional, and point to the evidence: the specification's own statements, the prosecution history, prior art of record, or a declaration if the vehicle permits.

Handle representative claims. If the defendant addressed one claim, identify a specific limitation in another claim that changes the analysis — and explain how. A generic objection fails.

Handle claim construction the same way. Identify the term, propose the construction, explain how it changes the result. Do not assert that construction is required without doing this.

Ask for leave to amend in the alternative, with a proposed amended complaint attached, if the deficiency is in the pleading rather than the claims.

Step 11: If the vehicle is summary judgment

Now you can build a record.

• A technical declaration from a person of ordinary skill addressing what was and was not conventional at the priority date, with support.
• Contemporaneous documents — publications, product literature, internal development records — showing the approach was not standard.
• Prior art showing what others were doing, which cuts both ways and should be assessed candidly.
• Deposition testimony from the defendant's own engineers about whether they had seen the approach before.

And note the tension: evidence that the combination was unconventional is also evidence relevant to §§ 102 and 103, and the defendant will use your declaration in its invalidity case. Coordinate the positions.

PART FOUR — AT THE PATENT OFFICE

Step 12: Responding to a § 101 rejection

Examination applies the USPTO's framework, which differs materially from the courts'.

Step 2A, Prong One. Argue the claim does not recite a judicial exception at all — that it does not fall within the enumerated groupings of mathematical concepts, certain methods of organizing human activity, or mental processes. This is worth arguing where the claim is genuinely technical, and it is the cleanest win.

Step 2A, Prong Two — where most applications succeed. Argue the claim integrates any exception into a practical application. The recognized routes:

• An improvement to the functioning of a computer or to another technology or technical field.
• Application with or by a particular machine.
• A transformation of an article to a different state or thing.
• Application in a meaningful way beyond generally linking to a field of use.

Point to the specification. The improvement must be described in the specification and reflected in the claim. Examiners look for both.

Amend to recite the mechanism. The most effective response is usually a claim amendment adding the technical specificity that shows the improvement — the specific data structure, the specific ordering, the specific hardware interaction.

Step 2B. Reached only if Prong Two fails. Argue the additional elements are more than well-understood, routine, conventional activity, citing the specification and, where appropriate, an affidavit.

The interview is worth taking. Eligibility rejections often reflect a characterization of the claim the examiner will reconsider once an inventor or attorney walks through the technical problem.

Step 13: Know what prosecution success does and does not buy

It gets you a patent. That has real value: licensing leverage, portfolio strength, and a presumption of validity under 35 U.S.C. § 282.

It does not guarantee survival in court. Prong Two has no counterpart in the judicial framework, and the Office's guidance does not bind courts.

Two practical consequences:

• Document the litigation-framework analysis separately. A file memo assessing the claim under the two-step framework, at the time of allowance, tells the litigation team years later which claims to assert.
• Consider filing a continuation with narrower, more technical claims even after allowance. It costs relatively little and it produces the claim you will want to assert.

PART FIVE — TWO WORKED MOTIONS

The motion that worked

Halverstone Analytics sues Pennyroyal Logistics on a patent claiming a method of optimizing delivery routes. Claim 1: receiving delivery addresses; retrieving historical traffic data; computing a route score for each candidate route using a weighting function; selecting the route with the highest score; and transmitting the route to a driver device.

Pennyroyal's counsel, Ruth Okonjo-Halvorsen, runs the screen in week one.

The specification. Background describes the business problem — inefficient routing costs money. The detailed description says the system "may be implemented on any conventional server," that the traffic data "may be obtained from any commercially available source," and that the weighting function "may be any suitable optimization function known in the art."

Ruth's note: three admissions in one paragraph. This is the motion.

The complaint. Six paragraphs. Recites infringement, attaches the patent, alleges the claims are "directed to a technological improvement in routing systems." No facts.

The motion, filed on day 34 with a request to stay discovery.

• Representative claim: claim 1, with a two-page chart showing claims 2 through 14 add only field-of-use limitations (delivery of perishable goods, use of a mobile device) and generic components.
• Claim construction: unnecessary; the patentee has identified no term whose construction would change the analysis. In the alternative, Pennyroyal adopts any construction Halverstone proposes.
• Step one: the claim is directed to selecting a route based on collected information — a method of organizing human activity that dispatchers performed with maps and experience. Side-by-side chart with three Federal Circuit claims held abstract.
• Step two: a server, a data source, a formula, and a transmission. Quoting the specification's own conventionality statements for each. The ordered combination is the ordinary sequence: gather inputs, score options, pick the best, tell someone.
• Berkheimer: no factual dispute, because the specification itself describes each component as conventional.

Halverstone's opposition argues the claims improve routing technology and that construction of "route score" is required.

The reply, three pages: the specification's improvement is a business improvement; the claim recites no technical mechanism; and Halverstone has not proposed a construction of "route score" or explained how any construction would change the result.

Granted with prejudice at month five. Defense cost through the motion: about $145,000.

The motion that did not

Cheswick Systems moves to dismiss a patent asserted by Larkspur Networks on the mesh-network bandwidth claim described in the companion article.

What Cheswick did wrong.

It characterized the claim as "collecting and using network information." The court found the characterization ignored the two-hop broadcast limitation, the decay function, and the specific rate-adjustment relation — and said so, which colored the rest of the opinion.

It did not read the specification carefully. The background section identified a specific technical problem with centralized congestion management (control-plane latency at scale) and described the distributed solution. There were no conventionality admissions; the specification said the opposite.

It ignored the complaint's factual allegations. Larkspur had pleaded, with specification citations, that limiting metric propagation to two hops was contrary to the prevailing approach at the priority date. Cheswick's brief did not address the allegation.

It filed on the pleadings when it needed a record. The right move was a technical declaration and summary judgment after limited discovery on conventionality.

Denied at month six. Cost: about $160,000, and a published order the patentee quoted in every subsequent case in the family.

The lesson. The screen is not a formality. A patent that fails the screen produces a cheap win; a patent that passes it produces an expensive loss and a bad precedent.

PART SIX — TIMELINE, BUDGET, AND FEES

Timeline

If proceeding by summary judgment, add limited discovery on conventionality (2–4 months) and expert declarations.

Budget

Compare to the alternative. A patent case through trial runs $2M to $6M. An eligibility motion that works is the cheapest dispositive outcome available in patent litigation, which is why it is screened first.

Fees under Section 285

Section 285 permits a fee award in exceptional cases. Eligibility outcomes feature in these motions in two situations.

Against a patentee that asserted claims plainly ineligible under settled law — particularly after a prior decision invalidating related claims, or after the defendant's letter identifying the issue. Courts have found cases exceptional where a patentee continued to assert claims after a controlling decision.

The practical instruction for a defendant: send an early, specific letter identifying the eligibility problem, citing the controlling authority, and offering to dismiss without cost if the patentee withdraws. It costs a day and it builds the record.

The practical instruction for a patentee: take such letters seriously and document the analysis of why the claims survive. Reasoned disagreement is not exceptional conduct; ignoring a controlling decision may be.

PART SEVEN — DRAFTING SO THE MOTION NEVER COMES

Every eligibility motion is a drafting question decided years earlier. This part is for the prosecutor.

Step 14: Write the background section as a technical document

Three paragraphs, in this order:

1. What the field does today, described technically and specifically.
2. What is technically wrong with it — the latency, the storage cost, the failure mode, the scaling limit. Not "this is inefficient for businesses"; a technical shortcoming.
3. What the invention changes, at the mechanism level.

This section does three jobs. It frames step one as a technical improvement. It supplies the Berkheimer factual predicate. And it gives litigation counsel language to quote in a complaint.

What to avoid. Statements that anything is conventional, well known, standard, or commercially available. If you must reference a known component, say the invention "employs" it rather than that it is "conventional." The words a specification uses become admissions.

Step 15: Recite mechanisms in the claims

The test: can a person of skill build the thing from the claim alone, or does the claim describe a goal?

Rewrite functional language into mechanism:

File claims at multiple levels of specificity. The broad functional claim may be the commercially valuable one and the vulnerable one. The narrow mechanism claim is the one that survives a motion and reads on the accused product.

In life sciences, add the treatment step wherever a therapeutic intervention exists. "Administering X mg of compound Y to a patient having a Z level above the threshold" is a method of treatment; "correlating Z level with responsiveness" is not eligible.

Step 16: Build the record at allowance

A short file memo, written when the claims are allowed:

• Which claims would survive the judicial two-step framework, and why.
• Which claims relied on Prong Two integration and therefore have no litigation analogue.
• What the specification says that supports unconventionality, with page and line citations.
• Any conventionality statements in the specification, flagged as risks.
• Whether a continuation with more technical claims is warranted.

This memo costs an hour and it is worth a great deal when litigation counsel is choosing which patent to assert six years later, working from a portfolio nobody has assessed.

PART EIGHT — MISTAKES THAT DECIDE THESE MOTIONS

Defendant characterizes the claim too broadly. It costs credibility on everything else.

Defendant does not read the specification. The conventionality admissions are the motion, and they are free.

Defendant addresses one claim without justifying it as representative. The most common reason a motion is denied without reaching the merits.

Defendant files on the pleadings when the complaint pleads facts. Move for summary judgment instead.

Patentee pleads conclusions. "The claims recite an inventive concept" is worth nothing.

Patentee asserts its broadest claims. Assert the ones that survive.

Patentee says construction is required without identifying a term. Routinely rejected.

Patentee ignores the representative-claim chart. Identify a specific limitation in another claim and explain how it changes the analysis, or the chart stands.

Prosecutor writes "conventional" in the specification. Every time.

Prosecutor claims results. Recite the mechanism.

Nobody assesses the portfolio before the first suit. The first case sets the precedent for the family.

PART NINE — FREQUENTLY ASKED QUESTIONS

How early can we move? Before answering, under Rule 12(b)(6). Many courts decide these motions without claim construction where the analysis does not turn on a disputed term.

Will the court stay discovery? Often, on request, where the motion is potentially dispositive and filed early. Ask; the cost saving is the point.

Can we combine § 101 with other Rule 12 grounds? Yes, and it is common to pair eligibility with a challenge to the adequacy of the infringement allegations. Keep the eligibility argument first and self-contained.

What if the patent survived a § 101 rejection in prosecution? It tells you the applicant made a Prong Two integration argument. Read it — it may contain admissions, and it does not bind the court.

Do we need an expert? Not on a Rule 12 motion, where the record is the claim and the specification. On summary judgment, a declaration on what was conventional at the priority date is usually necessary.

Can eligibility be raised at the PTAB? Not in an IPR, under 35 U.S.C. § 311. Only in a post-grant review under § 321, which is available only for patents with an effective filing date on or after March 16, 2013 and only within nine months of issuance.

What happens on appeal? De novo review of the legal question, clear-error review of any underlying factual findings. The Federal Circuit decides a substantial number of these appeals and its decisions are where the doctrine actually moves.

If we lose the motion, is the issue gone? No. Denial of a Rule 12 motion is not a merits determination; the issue can be renewed at summary judgment on a developed record, and preserved for trial and appeal.

Should we send a pre-suit letter identifying the problem? As a defendant, yes — it is cheap, it sometimes ends the case, and it builds the § 285 record. As a patentee receiving one, take it seriously and document your analysis.

What is the single best thing we can do? On the defense side, read the specification in week one. On the patentee side, decide which claims to assert before filing, not after the motion.

PART TEN — COORDINATING WITH THE REST OF THE CASE

Eligibility does not live alone. Five interactions matter.

With invalidity under §§ 102 and 103. The conventionality evidence at step two overlaps heavily with prior art. Build both records together, and be aware that a patentee's declaration establishing that the combination was unconventional is evidence you will use on obviousness — and that a defendant's prior art showing the combination was known is evidence for step two. Assign one person to keep the positions consistent across both.

With § 112. A claim drafted in functional terms to be broad often has both an eligibility problem and a written description or enablement problem, and the two arguments reinforce each other: the specification either describes a specific mechanism (helping eligibility, helping § 112) or it does not (hurting both). Brief them together where the same specification passages do the work.

With claim construction. If the case will have a Markman hearing, decide early whether to move before or after. Moving before is faster and cheaper; moving after gives the court a construed claim and removes the patentee's "construction is required" answer. In districts with early construction schedules, after is often better.

With the PTAB. Eligibility cannot be raised in an IPR under 35 U.S.C. § 311, so a defendant pursuing both tracks is running §§ 102 and 103 at the Board and § 101 in the district court. Coordinate the claim characterizations: a narrow construction argued to avoid prior art at the Board can be quoted against you at step one, and a broad characterization argued for eligibility can be quoted against you at the Board. This is the most common cross-track inconsistency, and it is entirely avoidable.

With damages and the case budget. A pending eligibility motion changes settlement dynamics. A patentee facing a strong motion should price it; a defendant with a strong motion should decide whether to settle before or after the ruling, recognizing that a granted motion ends the case at a fraction of the cost and a denied one hardens the patentee's position.

One scheduling point. Where multiple defendants are sued on the same patent in the same district, a coordinated motion — one brief, shared cost, one hearing — is materially cheaper and produces a single, cleaner record. Raise it with co-defendants in the first two weeks, before positions diverge.

PART TEN-B — LIFE SCIENCES: A SEPARATE PLAYBOOK

Diagnostic and biotechnology claims follow different rules in practice, and a litigator who treats them like software claims will misjudge both sides.

For the challenger

The claim shape tells you the answer. "Detecting a marker and correlating it with a condition" fails under Mayo almost without exception. The detection step is conventional assay technology, the correlation is a natural relationship, and there is nothing else.

Where to check before assuming a win:

• Is there a treatment step? A claim that administers a specific agent at a specific dose to a patient identified by the marker is a method of treatment, and those have been upheld. This is now the standard drafting response and you will see it often.
• Is the detection technique itself novel? Where the claim recites a new way of measuring — not a conventional immunoassay — the additional element may supply the inventive concept.
• Is the claimed composition markedly different from nature? Under Myriad and Chakrabarty, cDNA and engineered organisms are eligible; isolated natural sequences are not.

For the patentee

Assert the treatment claims if you have them. If the family contains both a diagnostic correlation claim and a method-of-treatment claim, assert the latter and consider not asserting the former at all.

If you have only correlation claims, assess candidly. The Federal Circuit has repeatedly held such claims ineligible while saying in concurrence that it regards the result as compelled and undesirable. Sympathy is not a defense.

Look at the alternatives. Regulatory exclusivity, trade secret protection for reference databases and algorithms, and first-mover advantage in laboratory operations do real work in this sector precisely because patent protection is unreliable.

For the prosecutor

Draft the treatment claim first. Where any therapeutic intervention follows from the diagnostic result, claim the intervention.

Claim the detection technique if it is new, separately from the correlation.

Claim compositions where they exist — engineered constructs, novel probes, non-naturally-occurring reagents.

And tell the client early. A research institution that has discovered a valuable correlation and expects a patent covering the correlation should hear the limitation before it builds a business plan around it.

PART ELEVEN — WHERE TO GET HELP

A patent litigator who has argued these motions. The doctrine is public; the sense of how a particular district and a particular judge handle representative claims, Berkheimer disputes, and pre-construction motions is not. It is worth an hour of someone's time before choosing the vehicle.

Your prosecution colleagues, on the defense side. The person who knows how to read a file history for a Prong Two argument and spot the admissions is a prosecutor, not a litigator. Fifteen minutes with the file wrapper often produces the best line in the brief.

A technical expert, early on summary judgment. Not for the Rule 12 motion — the record there is the patent. But if the vehicle is summary judgment, the declaration on what was conventional at the priority date is the case, and finding the right declarant takes weeks.

Appellate counsel before the reply brief, where the exposure is large. These appeals turn on how the claim was characterized below, and the characterization is locked in by the briefing.

Your own portfolio. For a patentee, the most useful resource is an inventory of the family: which claims are the most technical, which continuations are pending, and which claims a prior court has already assessed. Most companies do not have this, and building it takes a week and changes which case gets filed first.

PART TWELVE — THE ONE-PAGE VERSION

Defendant, week one: read every asserted claim aloud, read every specification for conventionality admissions, pull every file history. Score the patents. This is the cheapest hour in the case.

Defendant, weeks two to six: choose the vehicle honestly. Rule 12 where the specification admits conventionality and the complaint pleads conclusions; summary judgment where the complaint pleads facts you must rebut. Justify the representative claim with a chart. Adopt the patentee's construction for the motion. Frame step one at the level the claim supports, not higher.

Patentee, before filing suit: run the same screen on yourself, assert the claims that survive rather than the broadest, and consider what an adverse decision does to the family.

Patentee, in the complaint: plead the technical problem, what prior systems did, what the combination changes, and why it was unconventional — with specification citations, not conclusions.

Both sides, throughout: keep the § 101 characterization consistent with the § 103 and PTAB positions. Inconsistency is the most common self-inflicted wound in these cases.

Prosecutor, always: write a technical background, never write "conventional," recite mechanisms rather than results, file claims at multiple levels of specificity, add the treatment step in life sciences, and leave a one-page memo at allowance saying which claims would survive in court.

And the sentence to remember: the claim you write today is the claim a district judge reads in six years, with a motion in front of her and none of your explanation.

Related documents

• Patent Eligibility Under Section 101: The Alice/Mayo Framework and How Courts Apply It
• Patent Eligibility Checklist: A Practical Checklist
• Section 101 Toolkit: Claim Drafting, Motions to Dismiss, and Expert Support
• Patent Eligibility After Alice: Strategies for Protecting Software and Business Method Innovations
• Patent Post-Grant Proceedings: IPR, PGR, and Reexamination at the PTAB
• Claim Construction and Markman Hearings: How Courts Decide What a Patent Actually Covers
• Preparing for a Markman Hearing: A Practical Guide

This guide is general information, not legal advice, and does not create an attorney-client relationship.