Federal Circuit Judge Calls for a Fix to the “Abstract Idea” Mess: Part 4

August 16, 2018
Post by Kirk M. Hartung

Below you'll find the last and final post of this blog series concerning the "abstract idea". To read the previous posts, please view Part 1 of the seriesPart 2 of the series, and Part 3 of the series.

Prior blog posts illustrate concern from judges of the Court of Appeals for the Federal Circuit regarding the abstract idea judicial exception to § 101 patentable subject matter. In yet another decision by the Federal Circuit this spring, two additional judges, Lourie and Newman, express their concern about this aspect of patent law. See Berkheimer v. H. P. Inc., Case No. 2017-1437 (Fed. Cir. May 31, 2018). 

The judges acknowledge that many in the patent field believe there are problems with § 101, such that the law needs clarification, probably by Congress, rather than by their Court. The judges state that patent eligibility under § 101 used to be a fairly simple analysis in the rare instances when it arose. However, it is now a complicated multiple-step consideration, which has led to an increasing amount of inventive research no longer being subject to patent protection. Even meritorious inventions that combined and utilized man-made tools of biotechnology in revolutionary ways have been held ineligible subject matter. Judges Lourie and Newman agree that many brilliant and unconventional ideas are beyond patenting, simply because they are “only” ideas. They also suggest that the two-step abstract idea analysis has morphed into facts normally considered under § 102 (anticipation) and 103 (obviousness) of the patent statute. 

These two judges conclude that the current dilemma of § 101 has dug a deep hole of complicated analysis which needs resolution. Thus, at least four Federal Circuit judges have recently acknowledged this problem that effects many in the patent world, and strongly suggested that it's time to fix this mess.

Kirk M. Hartung is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit or contact Kirk directly via email at

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