Covered Business Method Review
- Only a party who is sued or charged with infringement of a Covered Business Method patent may petition for review, which is generally a party with standing to bring a declaratory judgment action in federal court.
- One may not petition for Covered Business Review within nine months following the issuance of a patent subject to first-inventor-to-file provisions; in situations involving first-to-invent patents, Covered Business Method review may be sought within the first nine months.
- A petitioner in a Covered Business Method review of a patent granted under the first-inventor-to-file provisions of the AIA may request to cancel as unpatentable one or more claims of a covered business method patent on any grounds, but limited prior art applies for first-to-invent patents.
- Estoppel following a Covered Business Method review is less extensive than a Post-Grant Review – Covered Business Method review estoppel is limited to those grounds actually raised in the proceeding, but the petitioner is not foreclosed from asserting in a later action any grounds that reasonably could have been raised during the Covered Business Method review.
- Pursuant to AIA provisions, Covered Business Method review is available only until September 2020.
Covered Business Method Review Process:
Strategy & Foresight
Covered Business Method Patent Review Will End as of September 16, 2020
The transitional program for covered business method (“CBM”) patents, which took effect on September 16, 2012, will sunset for new CBM petitions on September 16, 2020. Accordingly, unless Congress extends the program, parties have approximately one month left to file a new CBM petition. The transitional program for CBM patents was...
New USPTO Proposed Rule Addresses All-or-Nothing AIA Reviews, Patent Owner Reply Briefs, and Testimonial Evidence Standards in IPR, PGR, and CBM Proceedings
Pursuant to a recent notice of proposed rulemaking, the U.S. Patent and Trademark Office (“USPTO”) seeks to amend the rules of practice for inter partes review, post-grant review, and the transitional program for covered business method patents proceedings that implemented provisions of the Leahy- Smith America Invents Act (‘‘AIA’’) before...
Federal Circuit Firmly Rejects PTAB Criteria For Covered Business Method Review
Federal Circuit Firmly Rejects PTAB Criteria For Covered Business Method Review In a recent panel decision that deviates from the Federal Circuit’s current tendency to defer to the U.S. Patent and Trademark Office’s interpretation of the Leahy-Smith America Invents Act, the court vacated a final written decision of the USPTO...
Federal Circuit Judges Voice Concern Over PTAB Practice of Denying AIA Petitions Based on Redundancy
In a recent oral argument, Federal Circuit judges criticized the USPTO practice of not instituting AIA post grant proceedings on grounds considered “redundant” of other grounds in a petition. The USPTO conceded that it uses “redundancy” to control its docket without substantive review of the grounds presented in a petition,...
Brooks Kushman Earns Gold Honors in Patent 1000 Listing
SOUTHFIELD, Mich. – Brooks Kushman, intellectual property and technology law firm, is now listed in Intellectual Asset Management`s (IAM) annual Patent 1000, a guide that recognizes the world`s top patent law firms and practitioners in key jurisdictions. The 2014 IAM Patent 1000 issue marks the first time any firms from...
Murphy and Rondini Review Liberty Mutual Covered Business Method Cases in Law360 Article
SOUTHFIELD, Mich. – Brooks Kushman Shareholder Kristin Murphy and Associate John Rondini review two companion Covered Business Method (CBM) cases – captioned Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co. – and the Patent Trial and Appeal Board`s (PTAB) final decision in the article “PTAB Confirms Viability of Priority-Based...
Brooks Kushman Shareholder to Discuss Post-Grant Proceedings at IP Strategy Summit
SOUTHFIELD, Mich. – Brooks Kushman Shareholder Sangeeta Shah will serve on a panel at the Centerforce IP Strategy Summit in Chicago on May 12, 2015. The panel will focus on the proceedings for challenging patents created by the America Invents Act (AIA) and understanding how to best utilize the processes for effective defensive and enforcement strategies. Shah...
Brooks Kushman Shareholder to Discuss Post-Grant Proceedings at International Women`s Leadership Forum
SOUTHFIELD, Mich. – Brooks Kushman, Shareholder Sangeeta Shah will discuss post-grant proceedings at Managing IP`s International Women`s Leadership Forum on June 6, 2014 in New York. Shah`s presentation will focus on the new post-grant proceedings created under the 2013 America Invents Act. Shah will discuss the trends that she has seen...
Brooks Kushman Shareholder to Serve as Panelist at the Centerforce IP Strategy Summit
SOUTHFIELD, Mich. – Brooks Kushman Shareholder, Sangeeta G. Shah, will serve on a panel at the Centerforce IP Strategy Summit in Chicago on May 13, 2014. The panel will focus on the intricacies of post-grant proceedings and its use as a powerful tool in patent litigation strategy. Shah and the other...