Post-Grant Review of CBM PatentsAugust 2, 2018

A previous Filewrapper® blog post regarding the legal standard for determining whether a patent qualifies as a Covered Business Method (CBM) patent can be found here.

To better understand that discussion, it may be helpful to explain the nature of a CBM patent and the process of reviewing a CBM patent post-grant, which the America Invents Act (AIA) refers to as a “transitional post-grant review proceeding”. A transitional post-grant review proceeding of a CBM patent (CBM patent review) is an action that can be taken to review the validity of a patent before the Patent Trial and Appeal Board (PTAB) after a patent has been issued similar to an Inter Partes Review (IPR) or a Post Grant Review (PGR). CBM patent reviews are established and set forth in section 18 of the AIA.

A CBM patent review is only available for patents that qualify as CBM patents. In section 18 of the AIA, a “covered business method patent” is defined as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions”.

Additionally, there are differences between CBM patent reviews as compared to IPRs or PGRs. For example, in order to bring action for a CBM patent review, the petitioner must have been sued for infringement, which is not the case for IPRs or PGRs. Also, CBM patent reviews offer more avenues for a petitioner to argue that a patent is invalid. For example, IPRs can only invalidate patents based on 35 U.S.C. §§ 102 (novelty) and 103 (non-obviousness) arguments based on patents or printed publications (Cited 37 C.F.R. § 42.104). CBM patent reviews, however, allow petitioners to invalidate patents based on any condition for patentability including 35 U.S.C §§ 101 (patent eligible subject matter), 102 (novelty), 103 (non-obviousness), and 112 (specification requirements) (Cited 37 C.F.R. § 42.304).

CBM patent reviews are a tool accused infringers can use to invalidate a patent, but the days of CBM patent reviews are numbered. The AIA made clear that post-grant review of CBM patents is a transitional program by setting an 8-year expiration date for the program from the time the AIA took effect. Therefore, post-grant review of CBM patents will end in 2020.

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