Patent eligibility and utility (35 U.S.C. 101)

Eligibility asks whether a claim falls in a statutory category and, if it recites a judicial exception, whether it integrates it into a practical application or adds significantly more. Utility asks whether the invention has a specific, substantial and credible use.

Patentability: 101, 102, 103 and 1122 min read4 sections

Must-know for the exam

Step 1: process, machine, manufacture or composition of matter; transitory signals fail (MPEP 2106.03)
Step 2A prong one: does the claim recite an abstract idea, law of nature or natural phenomenon (MPEP 2106.04)
Abstract idea groupings: mathematical concepts, methods of organizing human activity, mental processes (MPEP 2106.04(a)(2))
Step 2A prong two: is the exception integrated into a practical application (MPEP 2106.04(d))
Step 2B: do additional elements amount to significantly more; 'well-understood, routine, conventional' needs factual support (MPEP 2106.05(d))
Natural products need markedly different characteristics; isolation alone is not enough (MPEP 2106.04(c))
Claims encompassing a human organism are barred (AIA sec. 33(a); MPEP 2105)
Self-evidently eligible claims can be cleared by a streamlined analysis (MPEP 2106.06)
Utility must be specific, substantial and credible; the examiner must make a prima facie case (MPEP 2107, 2107.02)
A 101 utility rejection is paired with a 112(a) how-to-use rejection (MPEP 2164.07)

On this page · 4 sections

Traps that cost marks

Jumping to Step 2A before checking the statutory category.
Treating any technical subject matter as an abstract idea.
Treating any claim that recites math as ineligible.
Equating 'known in one reference' with 'well-understood, routine, conventional'.
Thinking isolation alone makes a natural product patentable.
Thinking the bar comes from 101 case law alone.
Requiring regulatory-level proof of usefulness.
Making the utility rejection alone.

The analysis in order

Step	Question	If yes
1	Statutory category?	Go to 2A
2A prong one	Recites a judicial exception?	Go to prong two
2A prong two	Integrated into a practical application?	Eligible
2B	Significantly more than the exception?	Eligible

MPEP 2106

Where to look

When a question turns on a detail you are unsure of, search these sources on the exam computer:

•MPEP 2103-2107, 2164.07 (9th ed., Rev. 01.2024)
•35 U.S.C. 101
•AIA sec. 33(a)

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