Editor: Erika Harmon Arner
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:
Understand the Timing
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.
Know Who Can File
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.
Understand the Threshold Issues
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”:
- Covered Business Method and Technological Invention Definitions Final Rules (77 Fed. Reg. 48734, August 14, 2012)
Choose Your Grounds of Challenge
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).
Consider Estoppel Effects
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).
Required Parts of Petition
A petition for CBM TPGR must contain the following information:
- The grounds for standing;
- An identification of all claims challenged and all grounds on which the challenge to each claim is based;
- A claim construction for each challenged claim;
- A specific explanation of the grounds for unpatentability;
- A specific explanation of the relevance of evidence relied upon;
- An identification of all real parties in interest;
- Copies of evidence relied upon; and
- The required fee.
Know the Rules
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:
- Inter Partes, Post-Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012)
The USPTO has also promulgated Final Rules governing administrative trials before the PTAB and has published a corresponding Trial Practice Guide:
- General Administrative Trial Final Rules (77 Fed. Reg. 48612, August 14, 2012)
- Trial Practice Guide (77 Fed. Reg. 48756, August 14, 2012)
Learn from Examples and Tips
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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