AT THE PTAB BLOG
The Transitional Program for Post-Grant Review of Covered Business Method Patents (CBM TPGR) is a new trial proceeding before the Patent Trial and Appeal Board (PTAB), providing for the review of patentability of one or more claims of a “covered business method patent.” CBM TPGR became available on September 16, 2012 and is slated to sunset on September 16, 2020. Some things to consider before filing a petition for CBM TPGR:
A CBM TPGR petition may be filed at any time post-grant, except during the period in which a PGR petition could be filed for post-AIA patents. For pre-AIA patents, CBM TPGR is available at any time, including within the first nine months of grant.
CBM TPGR is only available to parties (or real parties in interest or privies) that have been sued for or charged with infringement of the patent to be challenged.
Review may only be sought for a “covered business method patent.” According to the AIA, 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.”
The USPTO has promulgated Rules to assist in evaluating a “covered business method” and a “technological invention”:
In post-grant review, including CBM TPGR, a petitioner can challenge the patentability of claims based on §§ 101, 102, 103, and 112 (except best mode).
A petitioner (or any real parties in interest or privies) is barred from requesting or maintaining a subsequent proceeding before the USPTO with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the TPGR. However, by contrast a petitioner (or any real parties in interest or privies) may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that was actually raised in the CBM TPGR proceeding. See, e.g., AIA § 18; 35 U.S.C. § 325(e)(2).
A petition for CBM TPGR must contain the following information:
In addition to § 18 of the AIA and 35 U.S.C. §§ 321-329, several different rules packages govern CBM TPGR proceedings. On August 14, 2012, the USPTO promulgated Final Rules which implement procedures for post-grant reviews including CBM TPGR:
The USPTO has also promulgated Final Rules governing administrative trials before the PTAB and has published a corresponding Trial Practice Guide:
The PTAB website includes a link to the Patent Review Processing System (PRPS), the electronic filing system for CBM TPGR proceedings. Here, nearly all of the documents filed in these proceedings are available to the public.
The PTO has supplied the following answers to Frequently Asked Questions regarding CBM TPGR:
Hon. Michael Tierney, Lead Judge of the PTAB, has also provided the following “Tips for Filing Petitions and Making Successful Arguments Before the Patent Trial and Appeal Board”:
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