Computer-Implemented Inventions at the USPTO – Focus on Patent Eligibility
Protecting computer-implemented inventions (CII), that is, software-related innovations, before the United States Patent and Trademark Office (USPTO) requires addressing a key question: subject matter eligibility under the Alice/Mayo framework. While the subsequent examination of novelty, non-obviousness, and sufficiency essentially follows the standard USPTO practice, eligibility often determines the fate of software-related applications.
For this reason, the drafting of the priority filing is critical. At Improve IP, we take U.S. subject matter eligibility practice into account at the drafting stage of the priority application while ensuring consistency with global CII requirements. This way, your application, even when the first filing is made abroad, can be successfully prosecuted before the USPTO without compromising protection in other jurisdictions and while reducing later adaptation costs.
Patentability of computer-implemented inventions before the USPTO
To begin with, it should be noted that, unlike the European Patent Office, the United States Patent and Trademark Office (USPTO) does not provide an official definition of “computer-implemented inventions” (CII). The term itself is not used. Instead, such inventions are generally referred to as “software-related inventions” or “computer-implemented methods” in the Manual of Patent Examining Procedure (MPEP) and by U.S. courts. For the purpose of the present discussion, we will consider that any invention involving software is covered under these terminologies.
When it comes to the patentability of these inventions before the USPTO, as with any other type of invention, a CII application must satisfy the major requirements of U.S. patent law to be granted, namely patent eligibility, novelty, non-obviousness, and sufficiency of disclosure. For software-related inventions, however, only subject matter eligibility tends to raise specific issues. By contrast, novelty, non-obviousness, and sufficiency of disclosure are essentially assessed in the same manner as for any other type of invention. The following discussion will therefore focus on the question of subject matter eligibility, a requirement derived from Section 101 of Title 35 of the United States Code, commonly cited as 35 U.S.C. § 101.
Accordingly, for applicants intending to protect software-related inventions in the United States, it is crucial to understand how the eligibility of CII is assessed by the USPTO, and incidentally, by the U.S. courts. This allows potential eligibility issues to be anticipated already at the drafting stage, particularly when the US application will be filed as a national phase entry of a PCT application or as a direct foreign priority application.
Subject matter eligibility under 35 U.S.C. § 101 (MPEP 2106)
As explained above, the subject matter eligibility of a claim is governed by 35 U.S.C. § 101. According to this provision, patents may be granted for any new and useful process, machine, manufacture, or composition of matter. On its face, the statute appears to define a wide scope of patent-eligible subject matter.
U.S. courts however have recognized, over time, implicit limitations to this rule, known as judicial exceptions, in order to specify the scope of patent-eligible subject matter. These judicial exceptions, established through case law, exclude from patent eligibility “laws of nature”, “natural phenomena”, and “abstract ideas” on the ground that they are regarded as basic tools of scientific and technological work and that granting them patent protection would impede, rather than promote, innovation. The decision Diamond v. Diehr (1981) has clearly expressed these limitations: “Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Among the judicial exceptions, abstract ideas are particularly relevant for computer-implemented methods since their claims often comprise features falling under this category.
While judicial exceptions are generally considered non-patentable by the jurisprudence, some inventions that involve them may nevertheless be regarded as patent-eligible by the USPTO. To determine whether inventions that involve judicial exceptions may be patent-eligible under 35 U.S.C. § 101, the USPTO applies a specific analytical framework. This framework, commonly referred to as the Alice/Mayo test, will be presented in more detail in the following sections, after clarifying what is meant by abstract ideas.
Abstract Ideas (MPEP § 2106.04(a))
As explained above, computer-implemented inventions (CII) often involve “abstract ideas”, in the sense that their claims may include limitations characterized as abstract ideas by the USPTO. The preliminary question is therefore what qualifies as an abstract idea under U.S. practice, as reflected in both USPTO examination guidelines and U.S. court decisions.
Since the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), the USPTO has identified three main categories of abstract ideas as described in MPEP § 2106.04(a):
• Mathematical concepts (i.e., mathematical relationships, formulas or equations, and calculations);
• Certain methods of organizing human activity (i.e., fundamental economic principles or practices; commercial or legal interactions; managing personal behavior or relationships or interactions between people); and
• Mental processes (i.e. concepts performed in the human mind).
In practice, the Examiner will therefore have to determine whether some features of the claims belong to one or more of these categories. In that case, the feature or the group of features is classified as an abstract idea. For the sake of completeness, an Examiner may also classify a feature or a group of features of a claim in a category called “tentative abstract idea” in case where it considers that these features, although not corresponding to one of these three categories, still correspond to an abstract idea.
Claims directed to computer-implemented inventions frequently raise issues under the three main categories of abstract ideas, particularly with respect to mathematical concepts and mental processes. For instance, a claim directed to a method of encrypting data may comprise features associated with a mathematical concept thereby raising the question of whether the claim as a whole is patent eligible. This leads to the question of how to determine whether a CII claim that includes at least one abstract idea (i.e., one judicial exception) may nevertheless be patent-eligible. As explained above, this question is addressed through the Alice/Mayo framework which will be examined below.
The Alice/Mayo framework for assessing patent eligibility of CII
The Alice/Mayo test is the standard framework used by the USPTO to determine whether a claim is patent-eligible under 35 U.S.C. § 101. This framework is particularly relevant for computer-implemented inventions, as it explains how to assess whether a claim that involves a judicial exception (an abstract idea for CII) is nevertheless patent-eligible. Before this framework was articulated, there was significant uncertainty for applicants filing software-related inventions regarding the outcome of the examination process.
The test originates from two landmark rulings of the U.S. Supreme Court: Mayo Collaborative Services v. Prometheus Labs. (2012) and Alice Corp. v. CLS Bank International (2014), which addressed the eligibility of claims involving, respectively, a law of nature and an abstract idea. The framework is therefore an interpretation of these decisions by the USPTO to ensure consistent application of case law by Examiners. That is, U.S. courts do not refer to the USPTO’s step-by-step framework, and directly apply the Alice and Mayo decisions.
That being said, the framework is systematically applied by Examiners to software-related inventions and has been codified in the USPTO’s examination guidelines (MPEP § 2106) as follows:
1. Step 1: Does the claim fall within one of the four statutory categories of invention (process, machine, manufacture, or composition of matter)?
– If no, the claim is not patent-eligible and the analysis ends.
– If yes, the analysis continues.
2. Step 2A Prong 1: Does the claim recite a judicial exception (laws of nature, natural phenomena, or abstract ideas)?
– If no, the claim is patent-eligible and the analysis ends.
– If yes, the analysis continues to prong 2.
3. Step 2A Prong 2: If the claim recites a judicial exception, does it integrate the exception into a practical application?
– If yes, the claim is patent-eligible and the analysis ends.
– If no, proceed to Step 2B.
4. Step 2B: If the claim does not integrate the exception into a practical application, does it nevertheless include additional elements that amount to “significantly more” than the exception itself (an inventive concept)?
– If yes, the claim is patent-eligible.
– If no, the claim is not patent-eligible.
The following sections provide a closer look at each stage of these questions test and their implications for computer-implemented inventions.
The Alice/Mayo test presents some interesting similarities with the COMVIK approach applied by the European Patent Office.
Step 1: Does the claim fall within one of the four statutory categories of invention (process, machine, manufacture, or composition of matter)?
The requirement of step 1 is straightforward, a claim must be directed to one of the four statutory categories of invention (process, machine, manufacture, or composition of matter) to be patent-eligible. If it does not, the analysis ends here.
For CII, claims are typically drafted as methods or computing systems, so this step is not an issue. Although EPO practitioners should note that a “use” claim may not be considered as a process claim and may therefore not be considered as patent-eligible by the USPTO.
Step 2A Prong 1: Does the claim recite a judicial exception (laws of nature, natural phenomena, or abstract ideas)?
Step 2A, Prong One requires a deeper analysis of the claim than the one performed in step 1. The question to be answered here is whether a law of nature, a natural phenomenon, or an abstract idea is recited (i.e. set forth or described) in the claim.
To address this question, each feature of the claims must be examined to determine whether it recites a judicial exception or instead qualifies as an additional element. In other words, the examiner distinguishes between features reciting judicial exceptions and the remaining features, referred to as additional elements. It is essential to distinguish between a feature that recites a judicial exception and one that merely involves a judicial exception, as emphasized in the USPTO memorandum issued on August 4, 2025.
For computer-implemented inventions, the examiner therefore analyzes whether the claim features correspond to at least one of the categories of abstract ideas identified above. The remaining features of a CII claim, i.e. the additional elements, may for instance include hardware components of the claims, data exchanges over a network, etc.
If no judicial exception is recited in the claim, i.e. if none of the claim features describe or set forth a judicial exception, the claim is patent-eligible and the analysis ends. Otherwise, the analysis proceeds to Step 2A, Prong Two.
Step 2A Prong 2: Do the additional elements of the claims integrate the judicial exception into a practical application?
If a claim recites a judicial exception, the next question is whether that exception is integrated into a practical application, thereby rendering the claim patent-eligible. This is the focus of Step 2A, Prong Two.
To be more specific, the question to be answered is whether the additional elements of the claims integrate the judicial exception into a practical application. The claim must, however, still be evaluated as a whole, i.e. additional elements should not be evaluated in a vacuum, completely separate from the recited judicial exception. Instead, the analysis should take into consideration all the claim limitations and how these limitations interact.
It should be noted that when a claim recites several judicial exceptions, the exceptions are generally grouped and considered together as a single exception for purposes of the eligibility analysis, both before the Office and before U.S. courts.
If the additional elements integrate the judicial exception into a practical application, the claim is patent-eligible and the analysis ends. Otherwise, the analysis proceeds to Step 2B.
The MPEP § 2106.04(d), drawing on U.S. case law, has identified several situations indicative that additional elements may integrate the judicial exception into a practical application.
In particular, two examples are especially relevant for software-related methods:
1. an improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP § 2106.04(d)(1) and §2106.05(a).
In other words, if the additional elements of a claimed computer-implemented method, eventually through their interaction with the features reciting a judicial exception, improve the functioning of the computer, or improve the related technical field, the claim should be considered patent-eligible.
2. implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b). A computer-implemented method including a specific hardware arrangement may therefore also be eligible.
By contrast, simply limiting a software claim to execution on a generic computer or to the use of generic computer-components does not suffice to integrate the exception into a practical application, and such a claim will not be considered patentable.
For computer-implemented inventions, step 2A Prong Two is often decisive, particularly because it can be easier to demonstrate than step 2B. An algorithm or a mathematical formula, when claimed in isolation, is treated as an abstract idea. However, if the claim shows how the algorithm improves, for instance, network security, image processing, or database management, it may be considered integrated into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
If a claim reciting a judicial exception fails to integrate it into a practical application under Step 2A, Prong Two, the analysis moves to Step 2B, the final step of the Alice/Mayo test. At this stage, the question is whether the additional elements, taken individually or in combination, amount to “significantly more” than the judicial exception itself.
If so, the eligibility requirement is satisfied. If not, the claim is not patentable. This step is often referred to as the search for an “inventive concept.”
In practice, this means determining whether at least one additional element taken in isolation or a combination of additional elements is non‑conventional for a person of ordinary skill in the art. U.S. decisions often express this as demanding additional elements that are not well-understood, routine, or conventional for the person ordinary skilled in the art.
For computer-implemented inventions, however, Step 2B is particularly difficult to satisfy, because most claimed methods can be implemented using generic computing components. Following the case law, such generic elements do not “amount to significantly more”. As a result, the eligibility discussion before the USPTO for software-related applications is generally centered on Step 2A, Prong Two, where it is often easier to show that the invention improves computer functionality or another technical field rather than to prove that the claimed additional elements, typically hardware components, are non-conventional.
That said, claims that demonstrate how a software-based solution departs from routine practice, for instance, by introducing a novel architecture for data storage, a non-conventional method of handling encrypted communications, or an inventive integration of hardware and software, may be found to include “significantly more” and thus pass Step 2B during examination.
This step concludes the Alice/Mayo test as performed by the USPTO. It should be recalled that this test is an administrative methodology designed to ensure consistent application of case law by examiners, and does not correspond to the reasoning structure followed by U.S. courts in their decisions.
Strategic Patent Drafting and Prosecution for CII at the USPTO
The Alice/Mayo test therefore constitutes the administrative framework that must be understood in order to patent computer-implemented methods before the United States Patent and Trademark Office. Whether a feature is framed as a judicial exception or not can make the difference between grant and refusal.
Bridging this complex legal test with practical drafting and prosecution strategies is precisely where Improve IP provides added value, not only in Europe but also before the USPTO. Although we are European patent attorneys, we have developed a deep understanding of the Alice/Mayo framework. This enables us to anticipate eligibility issues from the drafting stage, just as we anticipate inventive step issues under the Comvik Approach at the same stage.
More broadly, at Improve IP, our drafting approach incorporates the requirements and best practices of other major patent offices (EPO, CNIPA, JPO, KIPO, CIPO, etc.) into the drafting of the priority application. By doing so, our experts turn the priority filing into a solid foundation for worldwide prosecution ensuring that applicants’ software-related inventions can be effectively prosecuted across jurisdictions, reducing subsequent adaptation costs and increasing the chances of securing effective protection across jurisdictions.
Are your CII applications drafted to fulfill both USPTO requirements while addressing cross-jurisdictional challenges?