Post-Grant Proceedings

Covered Business Method Review

Notice: As of September 16, 2020, Covered Business Method (CBM) Review is no longer available, in accordance with the sunsetting provisions at Sec. 18(a)(3)(A) of the Leahy-Smith America Invents Act.

Covered Business Method (CBM) Review applied to patents that claimed a method, apparatus, or operation used in the practice, administration, or management of a financial product or service. CBM patents did not include patents for “technological inventions,” which were those patents that claimed a novel and unobvious technological feature that solved a technical problem using a technical solution. Technological patents were identified on a case-by-case basis.

Final Rules for Transitional Program for Covered Business Method Patents
Final Rules for Trials before the Patent Trial and Appeal Board
Practice Guide for Final Trial Rules

CBM review was similar to post-grant review, but there were notable differences between the two. For example, only a party charged with infringement of a CBM patent could initiate a CBM challenge, although under the final rules, a party that had been served a cease and desist letter was likely to be considered to have been charged with infringement for purposes of petitioning for post-grant review of a CBM patent. Additionally, CBM review could be filed only when post-grant review was unavailable (e.g., nine months after issuance). And the prior art available for CBM review of a patent granted under the first-to-invent rules (i.e., patents filed prior to March 16, 2013) was limited to that defined in section 18(a)(1)(C) of the America Invents Act. CBM review also included unique estoppel provisions that were less extensive than post-grant review. Specifically, estoppel under CBM review extended only to grounds actually asserted but not to grounds that reasonably could have been asserted.

Next: Post-Grant Review