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Overview

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Covered Business Method review is similar to inter partes review with some notable differences.

First, CBM review is limited to a specific group of patents relating to “business method,” defined as patents that claim a “method” or “apparatus” for performing data processing or a similar operation relating to the practice, administration or management of a financial product or service.  Any patent for a “technological invention” is excluded from this procedure under the AIA.  Not surprisingly, the PTAB and the courts are still refining the application of these terms on a case-by-case basis.

Second, CBM review is only available if the petitioner is sued for infringement or shows that they have been threatened with such a lawsuit by means of a cease and desist letter, for example.  The petitioner also cannot be anonymous.  A CBM can only be filed after the post-grant review period expires or later than nine months after the patent’s issuance.

Finally, estoppel under a CBM review is narrower than other post-grant options.  Specifically, estoppel under CBM review extends only to grounds actually asserted.  It does not extend to grants that could have been reasonably asserted, as is the case with both inter partes review and post-grant review. 

There are numerous advantages to using CBM over IPR or PGR if available.  Specifically, a petitioner using the CBM process may challenge the validity of a patent’s claims using prior art and publication while at the same time challenging whether the patent covers patent-eligible subject matter (§ 101) and whether the patent’s specification provides a complete and informative description of the claimed invention.  In addition, there is no timing limit on the filing of a CBM petition, and, as mentioned above, estoppel is limited to grounds actually raised. 

Either party in covered business method review may appeal the PTAB’s decision to the Federal Circuit.

Covered Business Method review is similar to inter partes review with some notable differences.

First, CBM review is limited to a specific group of patents relating to “business method,” defined as patents that claim a “method” or “apparatus” for performing data processing or a similar operation relating to the practice, administration or management of a financial product or service.  Any patent for a “technological invention” is excluded from this procedure under the AIA.  Not surprisingly, the PTAB and the courts are still refining the application of these terms on a case-by-case basis.

Second, CBM review is only available if the petitioner is sued for infringement or shows that they have been threatened with such a lawsuit by means of a cease and desist letter, for example.  The petitioner also cannot be anonymous.  A CBM can only be filed after the post-grant review period expires or later than nine months after the patent’s issuance.

Finally, estoppel under a CBM review is narrower than other post-grant options.  Specifically, estoppel under CBM review extends only to grounds actually asserted.  It does not extend to grants that could have been reasonably asserted, as is the case with both inter partes review and post-grant review. 

There are numerous advantages to using CBM over IPR or PGR if available.  Specifically, a petitioner using the CBM process may challenge the validity of a patent’s claims using prior art and publication while at the same time challenging whether the patent covers patent-eligible subject matter (§ 101) and whether the patent’s specification provides a complete and informative description of the claimed invention.  In addition, there is no timing limit on the filing of a CBM petition, and, as mentioned above, estoppel is limited to grounds actually raised. 

Either party in covered business method review may appeal the PTAB’s decision to the Federal Circuit.

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