MPEP Q & A 265: What is the second part of the Alice/Mayo test often referred to as?



What is the second part of the Alice/Mayo test often referred to as?


The second part of the Alice/Mayo test is often referred to as a search for an inventive concept.

  • An inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. v. Merial LLC.
  • Instead, an “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer come from section 2106.05 of the MPEP.  The following is a brief summary of section 2106.05.

2106.05  Eligibility Step 2B: Whether a Claim Amounts to Significantly More

This section covers eligibility step 2B which refers to whether a claim amounts to significantly more. Topics discussed include the search for an inventive concept and whether the additional elements contribute an ‘inventive concept’ . For instance, while abstract ideas, natural phenomena, and laws of nature are not eligible for patenting by themselves, claims that integrate these exceptions into an inventive concept are thereby transformed into patent-eligible inventions. 

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