What Can Actually Be Patented: Section 101, Alice, and the Abstract Idea Problem
By Casey Scott McKay ·
Before a patent examiner asks whether an invention is new, whether it is obvious, or whether the application describes it properly, a threshold question comes first: is this the kind of thing the patent system covers at all? The statute answers generously and the case law does not, and the gap between them has swallowed a great many patents. This article explains the two-step framework that governs eligibility, why the phrase abstract idea has no definition and what practitioners use instead, how software and diagnostic claims fail and what makes them survive, and why the same invention can be eligible or ineligible depending entirely on how the claim was written. It is for the inventor who has been told their idea is not patentable, the lawyer drafting around the problem, and the litigator holding a motion that could end a case at the pleadings. The companion guide and checklist supply the drafting and the response.
IP and Technology > Patent Counseling Transactions | Article | Published 3 July 2024 - Updated 6 July 2026 | Casey Scott McKay - marksy.us
Summary. Before a patent examiner asks whether an invention is new, whether it is obvious, or whether the application describes it properly, a threshold question comes first: is this the kind of thing the patent system covers at all? The statute answers generously and the case law does not, and the gap between them has swallowed a great many patents. This article explains the two-step framework that governs eligibility, why the phrase abstract idea has no definition and what practitioners use instead, how software and diagnostic claims fail and what makes them survive, and why the same invention can be eligible or ineligible depending entirely on how the claim was written. It is for the inventor who has been told their idea is not patentable, the lawyer drafting around the problem, and the litigator holding a motion that could end a case at the pleadings. The companion guide and checklist supply the drafting and the response.
Keywords: patent eligibility, Section 101, Alice, Mayo, abstract idea, law of nature, natural phenomenon, two-step framework, inventive concept, technical improvement, software patents, diagnostic claims, preemption, machine or transformation, claim drafting, subject matter eligibility, Alice step one, Alice step two, patent prosecution, eligibility rejection
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