The Alice Two-Step Test in Post-Grant Proceedings

Since 2014, the framework of Alice Corp. v. CLS Bank International has governed whether claims are directed to patent-ineligible abstract ideas under 35 U.S.C. § 101. Most § 101 disputes are decided in district courts and during examination. But eligibility also comes up at the Patent Trial and Appeal Board, and how it gets there depends on the type of proceeding. (For the history of the case itself, see Alice v. CLS Bank: from the en banc Federal Circuit to the Supreme Court.)

The two steps in brief

Alice adopted the two-step framework of Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012):

Decide whether the claim is directed to a judicial exception, such as an abstract idea.
If it is, look for an inventive concept: an element or combination of elements that amounts to significantly more than the exception itself. Generic computer implementation is not enough.

The Federal Circuit has applied both steps in many decisions, and has held that claims directed to a specific improvement in computer functionality are not abstract at step one.

Which PTAB proceedings allow § 101 challenges

Proceeding	Can a petitioner raise § 101?	Why
Post-grant review	Yes	§ 321(b) allows any ground under § 282(b)(2) or (3), which includes § 101
Covered business method review	Yes, while it existed	CBM review used PGR’s grounds; the program closed to new petitions on September 16, 2020
Inter partes review	No	§ 311(b) limits grounds to §§ 102 and 103 based on patents and printed publications
Ex parte reexamination	No	Limited to substantial new questions based on patents and printed publications

CBM review

For about eight years, covered business method review was the main PTAB route for § 101 challenges. Many CBM petitions combined § 101 grounds with prior-art grounds, and the Board frequently applied Alice to financial-services and e-commerce patents. The program, created by AIA § 18, closed to new petitions on September 16, 2020.

Post-grant review

PGR remains open to § 101 arguments, but only for first-inventor-to-file patents and only within nine months of grant. That makes PGR a narrow, early opportunity: a challenger who wants the Board to apply Alice must act soon after the patent issues.

Section 101 and substitute claims in IPR

Even though a petitioner cannot raise § 101 in an IPR petition, eligibility can arise later in the trial. When a patent owner files a motion to amend, it proposes substitute claims that have never been examined. In Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR2017-00948, Paper 34 (see the Amazon v. Uniloc note), the Board held that it may consider whether proposed substitute claims are patent-eligible under § 101. The limit in § 311(b) applies to the petition’s grounds, not to new claims the patent owner asks the Board to add.

Motion-to-amend procedure has changed several times; see amending claims during IPR and check current USPTO guidance.

The USPTO’s eligibility guidance

The USPTO applies Alice in examination through the guidance in MPEP § 2106. That guidance organizes the inquiry into steps that track the Supreme Court’s framework, explains how examiners identify abstract ideas, and addresses when a claim integrates an exception into a practical application. The Office has revised the guidance several times since 2014, so practitioners should consult the current MPEP and any later USPTO notices. Parties in Board proceedings often cite it, particularly when new or amended claims are being evaluated.

Key takeaways

Alice (2014) set the two-step test for abstract ideas under § 101.
PTAB petitioners can raise § 101 in post-grant review; CBM review also allowed it until the program ended in 2020.
Inter partes review petitions cannot raise § 101, but the Board may assess substitute claims for eligibility, as in Amazon v. Uniloc.
The USPTO’s current eligibility guidance is in MPEP § 2106.