A petitioner for covered business method review (“CBMR”) may request to cancel as unpatentable one or more claims of a covered business method patent. This request may be made on any ground, including anticipation, obviousness, non-statutory subject matter, or failure to meet the written description and/or enablement requirements. This proceeding is available with respect to all patents that include at least one claim drawn to a covered business method.
A covered business method patent is one 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 (where 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).
The final rules establish that the determination of whether a patent covers a technological invention is based on whether 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. In order to preserve standing, the petitioner bears the burden of proving that the challenged patent includes at least one claim that is not directed to a technological invention - this determination is made on a case-by-case basis.
The transitional program for post-grant review of covered business method patents differs from standard PGR proceedings in certain respects. For example, only a party charged with infringement of a patent can petition for review under the program. Also, for first-to-invent patents (includes all patents issuing from applications having an effective priority date prior to March 16, 2013), only a subset of prior art is available to support the petition. The estoppel provisions are less onerous; a petitioner in a CBMR is only estopped from requesting or maintaining a subsequent proceeding before the Office with respect to any claim on any ground actually raised in the CBMR (i.e., estoppel does not extend to grounds that reasonably could have been asserted).
Accordingly, a petitioner in a CBMR may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised during the CBMR proceedings. In addition, a patent owner is estopped from taking action inconsistent with any adverse judgment, including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawings in a way that it was not permitted to do during the proceeding.
This transitional program ends on September 16, 2020, so no new petitions filed on or after that date will be accepted.