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.
