The subject matter requirement prescribed in 35 U.S.C. section 101 has lately been back on the Federal Circuit Court's radar. Section 101 obligates a patent examiner to determine that the claimed invention qualifies as subject matter deemed patentable before she evaluates any other requirement for patentability. Until the fall of last year, this requirement was viewed generally as encompassing a broad scope of subject matter. The phrase "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof," 35 U.S.C. section 101, had been interpreted broadly by both the U.S. Supreme Court and the Federal Circuit Court of Appeals.

On Sept. 20, 2007, the Federal Circuit handed down two decisions that revisited the previously vague limitations placed on patentable subject matter, trimming back the overgrown hedges that had been blurring the boundaries surrounding the requirement, particularly for process claims. In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007); In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007). More recently, on Feb. 15, 2008, the Federal Circuit sua sponte "granted" an en banc hearing in the In re Bilski appeal (No. 2007-1130) signaling its intention to further define - or re-define, as the case may be - the standard for determining when a process claim constitutes patenteligible subject matter under section 101.

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