»»»As noted in the Comisky Special Report, another case pending before the Federal Circuit relating to the scope of §101 subject matter eligibility for business methods is the PTO Board of Appeals’ non-precedential decision in In re Bilski. On February 15, 2008, the Federal Circuit on its own initiative issued an order granting an en banc hearing, and listing five questions to be addressed by the parties in supplemental briefs. The questions include, among others, what standard should govern in determining whether a process is patent-eligible subject matter under §101, when does a claim that contains both mental and physical steps create patent-eligible subject matter, and should the Federal Circuit’s State Street Bank v. Signature Financial Group and AT&T v. Excel Communications decisions be reconsidered and overruled in any respect?

October 22, 2007