A Covered Business Method Review (CBM Review) is a type of post-grant proceeding available under the America Invents Act (AIA). CBM Reviews are intended to provide a quicker and cheaper alternative to traditional patent litigation for challenging the validity of covered business method patents.
To initiate a CBM Review, a petitioner must file a petition with the USPTO, along with the required fee. The petition must identify the patent (or patents) at issue and explain why the patent is ineligible for protection under 35 U.S.C.
The USPTO will then decide whether to institute a CBM Review. If the USPTO decides to institute a CBM Review, the patent owner will be given an opportunity to file a preliminary response.
Covered Business Method Patent
CBM Reviews are only available for patents claiming a “covered business method,” which is defined by the AIA as:
“…a process, technique, or formula for performing business, financial, or management activities… if the claimed invention is directed to a process or technique for performing one or more of the following:
i) practicing or applying an accounting, auditing, financing, managing, or marketing method;
ii) practicing or applying a mathematical or statistical method; or
iii) managing or practicing a financial product, service, investing, hedging, or transaction.”
This definition is intentionally broad, and is intended to cover a wide range of business methods.
Filing Petitions
What can be challenged? A covered business method patent is “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.”
35 U.S.C.
How to file a petition? To initiate a CBM Review, a petitioner must file a petition with the USPTO, along with the required fee. The petition must identify the patent (or patents) at issue and explain why the patent is ineligible for protection under 35 U.S.C.
The USPTO will then decide whether to institute a CBM Review. If the USPTO decides to institute a CBM Review, the patent owner will be given an opportunity to file a preliminary response.
After considering the preliminary response (if any), the USPTO will issue a final written decision, which may invalidate all or some of the claims of the challenged patent.
Post Grant Review
Post Grant Review (PGR) is another type of post-grant proceeding available under the AIA. PGRs are similar to CBM Reviews in that they are intended to provide a quicker and cheaper alternative to traditional patent litigation for challenging the validity of patents.
However, there are some key differences between PGRs and CBM Reviews. First, PGRs are available for any patent, regardless of whether it is a covered business method patent. Second, PGRs are only available for patents that have been issued within the past nine months.
To initiate a PGR, a petitioner must file a petition with the USPTO, along with the required fee. The petition must explain why the patent is invalid and identify any prior art that supports the petitioner’s position.
The intellectual property law experts and patent attorneys at Schmeiser, Olsen and Watts are dedicated to acquiring, protecting and managing your ideas and inventions. We provide patent, trademark and copyright prosecution, as well as IP litigation and post-grant proceedings. We also offer IP consulting and represent clients who are interested in selling or licensing their intellectual property rights through commercialization. In addition, our legal team has extensive training and experience in variety of technical fields.
