Patent Eligibility at the USPTO: The Same Test, a Different Framework

Written by Ben Esplin

In my earlier series on patent eligibility under Section 101, I argued that the USPTO and federal courts administer the Alice/Mayo test through substantively different, logically inconsistent, frameworks. I want to revisit that distinction here, bringing the basic structure and the underlying disagreement together in one place. The purpose is to establish a foundation for examining particular features of the Office’s analysis. This discussion is directed to USPTO examination, not to how a federal court would necessarily decide the same eligibility question.

How the Steps Line Up

The Supreme Court’s Alice/Mayo framework has two principal inquiries. First, is the claim directed to a judicial exception: an abstract idea, law of nature, or natural phenomenon? If so, the second inquiry considers whether the claim contains an inventive concept sufficient to transform it into a patent-eligible application of that exception. That second inquiry examines the claim elements both individually and in their ordered combination; reaching it does not, by itself, establish ineligibility.

The USPTO places those inquiries within a larger structure, beginning with the statutory categories specified in Section 101. Its stated correspondence to the judicial test looks like this:

Question

USPTO stage

Does the claim fall within a statutory category: process, machine, manufacture, or composition of matter?

• Step 1

Is the claim directed to a judicial exception—the first Alice/Mayo inquiry?

• Step 2A, comprising Prong One and Prong Two

Does the claim amount to significantly more than the exception—the second Alice/Mayo inquiry?

• Step 2B

The numbering takes a little unpacking. Alice/Mayo’s first inquiry is not USPTO Step 1, and Prong One is not the entirety of the Office’s counterpart to that inquiry. Both prongs of Step 2A collectively answer the Office’s directed-to question. The vocabulary has caused confusion in actual proceedings: during a January 2020 PTAB hearing in Investors Exchange v. Nasdaq, Judge Petravick referred to “the confusing nomenclature” as participants clarified which steps and prongs they meant. When lawyers have to stop and establish which “step one” they are discussing, the labels are not doing much explanatory work.

How the USPTO’s Analysis Proceeds

At Step 2A, Prong One, the examiner asks whether the claim recites a judicial exception, or, whether it sets forth or describes one. If the claim does not recite an exception, it is eligible under this inquiry, and the analysis ends. If it does, the analysis proceeds to Prong Two. The distinction between reciting an exception and being directed to that exception is essential: the first finding does not establish the second.

At Step 2A, Prong Two, the examiner evaluates whether the claim as a whole integrates the recited exception into a practical application. The exception-containing limitations and the additional elements must be considered together; this is not an exercise in removing the exception and examining whatever remains. If the claim integrates the exception into a practical application, the Office treats it as not directed to the exception, and it is eligible. If the claim does not, the Office treats it as directed to the exception. Only then does the analysis proceed to Step 2B.

At Step 2B, the examiner considers whether the additional elements, individually and in combination, cause the claim as a whole to amount to significantly more than the exception. This includes consideration of whether additional activity is well-understood, routine, and conventional, an inquiry excluded from Prong Two. A claim that fails the practical-application inquiry can therefore still be eligible at Step 2B. The Office’s framework provides distinct opportunities to establish eligibility, rather than treating the identification of an exception as the end of the analysis.

Where the Reasoning Diverges

The consequential difference, as I see it, lies within the directed-to inquiry. Federal Circuit decisions such as Enfish examine the focus or character of the claim as a whole. In Enfish, the court asked whether the claims focused on a specific improvement in computer capabilities or instead on an abstract process for which computers were merely tools. That form of analysis characterizes what the claim is directed to and evaluates whether that subject matter is an exception; it does not simply ask whether an exception can be found somewhere within the claim.

The USPTO’s stated sequence approaches the question from the other direction. It first identifies an exception recited in the claim and then asks whether the claim integrates that exception into a practical application. In shorthand, the comparison is claim focus first, then classification, versus recited exception first, then practical integration. This is the distinction I regard as substantive rather than terminological: the two approaches can arrive at similarly labeled conclusions through findings that do not correspond.

Consider what an eligible determination at Prong Two actually establishes. The Office has identified an exception in the claim and concluded that the claim integrates it into a practical application. It therefore concludes that the claim is not directed to that exception, without necessarily making a separate affirmative finding identifying what the claim is directed to instead. This does not mean the Office ignores the claim as a whole; Prong Two expressly requires whole-claim consideration. The difference concerns what that consideration must establish, not whether it occurs.

That distinction matters when trying to translate an examination determination into the reasoning a court will employ. A finding that a claim is not directed to an identified exception does not necessarily supply the same premise as an affirmative characterization of the claim’s focus. Even when the ultimate eligibility outcomes agree, the supporting findings need not be interchangeable. In my view, that mismatch helps explain why the Office’s eligibility analysis can provide an uncertain foundation for later judicial consideration: the difficulty is not simply renaming the steps, but determining whether the same questions were answered.

Understanding the USPTO’s framework does not require accepting its equivalence to the judicial approach. It does allow us to examine whether the Office’s analysis is coherent on its own terms. That is where I want to turn next, with one narrow question: how clearly the alleged abstract idea must be identified at the beginning of Prong One, and how consistently its identity must be maintained throughout the remaining analysis. Before asking whether a claim practically applies an abstract idea or amounts to significantly more than it, we need to know which idea the analysis is addressing.