OVERVIEW:
A PRIMER ON CBMs

TRANSITIONAL PROGRAM FOR COVERED BUSINESS METHOD PATENTS

Timing

  • A CBM Petition can be filed only after party is sued or charged with infringement.

Threshold

  • “[T]hat it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”; or
  • there is a “showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.”

Scope

  • Petitioner may raise arguments under 35 U.S.C. §§ 101, 102, 103, and 112 (but not best mode).

Applicability

  • Applies to only “business method patents.”
  • 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.” A patent is considered a “technological invention” when “the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” 37 C.F.R. 42.301(b).

Estoppel

  • A petitioner in a CBM may not assert that a claim is invalid on any ground that the petitioner actually raised in the CBM in a subsequent district court or ITC action. In addition, a petitioner in a CBM may not request or maintain a subsequent proceeding before the PTO with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the CBM.
  • A patent owner is estopped from taking actions inconsistent with an adverse judgment, such as obtaining a claim in a patent that is patentably indistinct from a finally refused or cancelled claim.