Transitional Program for Covered Business Method Patents

The Transitional Program for Covered Business Method Patents was established by the Leahy-Smith America Invents Act (AIA). Under the AIA, you can challenge the validity of a covered business method patent before the U.S. Patent and Trademark office if you have been sued for or charged with patent infringement. After the implementation of the AIA, third parties were granted the ability to request a business method review on the basis of prior art. However, only the person that has been sued for infringement can request this transitional proceeding.

The proceeding established by the Transitional Program for Covered Business Method Patents allows you to challenge the validity of a patent. Only patents for apparatuses and methods of data processing, or operations of a financial product or service, can be challenged. During a Transitional Program for Covered Business Method Patents (TPCBM) trial proceeding, the patentability of a covered business method will be reviewed. This new type of board proceeding can be used for a single claim or multiple claims.

The same proceedings of a post-grant review will be used for a TPCBM proceeding. However, there are certain exceptions. In cases involving first-to-invent patents, for example, only a small subset of prior art can be used for the challenge. Also, only parties that have been charged with infringement, or are currently being sued for infringement, can challenge a patent.

TPCBM reviews have been available since September 16, 2012, and can only be used for covered business methods. These proceedings will be discontinued for new challenges on September 16, 2020. TPCBM proceedings serve as an alternative to traditional litigation and are designed to be more efficient. Unlike regular trials, these petitions must reach a final decision no more than a year after the beginning of proceedings. If there is a good cause, a six-month extension may be granted.

What Is Covered Business Method Patents?

A covered business method patent is a type of patent that covers a method used for data processing. It can also apply to operations that are used for managing or administering products or services related to finance. However, this does not apply to technological inventions.

Whether a patent provides protection for a technological invention is a very complicated issue and is usually evaluated on an individual basis. The decision will be based on if the subject matter a person is seeking to patent uses a technical solution to address a technical problem and describes a technical feature. The nature of this definition can sometimes make it unclear what types of patents are eligible for a TPCBM proceeding.

Any patent that fits this definition can be challenged for the duration of the patent term as long as the challenge does not occur during the nine months after a patent has been granted or reissued. During this period, post-grant review requirements must be satisfied.

Review of the Covered Business Method Patents

When you petition for a review, you must prove that the patent is for a covered business method. You will also need to meet the following two requirements:

  1. You are being sued for infringement.
  2. There is some disagreement as to whether you actually infringed on the patent in question.

You will also need to identify all claims that you are challenging, your grounds for challenging the claims, as well as a few other requirements. Your proceeding will be tried before the Patent Trial and Appeal Board. You will be allowed to use external evidence during your proceeding. This includes expert testimony.

The procedures of a TPCBM proceeding will be almost identical to those of a post-grant review. For instance, the fee for requesting a review will be at least $30,000, although this can change depending on how many claims are being challenged. Unlike post-grant reviews, you will have a long amount of time to request a TPCBM proceeding. In addition, TPCBM decisions occur much sooner than the conclusion of a post-grant review.

If a covered business method counts as a technological invention, a review will not be available. However, the PTAB can examine claims on a one-to-one basis to decide if they constitute a technological invention. You can use these reviews to challenge a covered business method on any grounds, although there are certain subject limitations.

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