August 14, 2014

Qualification for Covered Business Method Review

Paul C. Haughey – August 4, 2014

The America Invents Act (AIA) provided a transitional program for post-grant review of covered business method (CBM) patents by the Patent Trial and Appeal Board (PTAB). It sunsets after eight years and is currently set to expire on September 16, 2020. A CBM provides an alternative to court litigation for challenging the validity of qualifying business method patents. A CBM review has a number of advantages over an inter partes review (IPR, also enacted in the AIA) for qualifying patents:

  • A CBM petition can be filed at any time; it is not limited to one year after service of a complaint like an IPR.
  • The estoppel for a CBM is limited to issues actually raised, not issues that could have been raised, as in an IPR.
  • A CBM can challenge a patent under 35 U.S.C. § 102 and § 103 like an IPR (except § 102(e)), and can also challenge a patent under § 101 and § 11

CBM Requirements

1. Standing—suit or threat of suit. Petitioner or privy (e.g., customer) has been sued or charged with infringement (declaratory relief standard).
2. No filed invalidity suit. Petitioner or a real party in interest has not filed a civil action challenging the validity of the patent (declaratory relief). An invalidity counterclaim is acceptable.
3. Qualification. At least one claim of the challenged patent qualifies under the two-part test for a CBM:
a. Invention is financially related (e.g., described as used for financial services).
b. The novel elements of the claim are nontechnical.
i. First prong: Does the claimed subject matter as a whole recite a technological feature that is novel and unobvious over the prior art?
ii. Second prong: Does the claimed invention solve a technical problem using a technical solution?
4. Showing of invalidity. The challenged claims are shown to be "more likely than not" unpatentable under one of the allowed grounds under 35 U.S.C. §§ 101, 102, 103, or 112.
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