The Leahy-Smith America Invents Act (AIA), a collection of federal statutes signed into law on September 16, 2011, has significantly impacted the intellectual property landscape. Under the AIA, several administrative post-grant patent trial proceedings were introduced as a means to challenge the patentability of issued U.S. patents, including Inter Partes Review, Post-Grant Review, and Covered Business Method Review.
The AIA was intended to establish an efficient system to improve patent quality and empowers the Patent Trial & Appeal Board (PTAB, formerly the Board of Patent Appeals & Interferences) of the United States Patent and Trademark Office (USPTO) to decide post-grant challenges and review patentability in a speedy and cost-effective manner. The PTAB must decide whether to institute a patent trial proceeding within six months of receiving a petition challenging patentability of one or more claims of a patent. Within twelve to eighteen months from institution of a trial proceeding, the PTAB will provide a final decision on patentability. Notably, the PTAB decisions on patentability are directly appealable to the U.S. Court of Appeals for the Federal Circuit. Due to the potential impact of these proceedings, a multi-disciplined approach is warranted. Brooks Kushman’s post-grant practice group is well-versed in patent litigation, patent prosecution, administrative trial proceedings, appellate practice before the PTAB, patent investigations, and patent searching; and thus is uniquely qualified to utilize these proceedings to challenge or defend patents.
COVERED BUSINESS METHOD REVIEW
According to the AIA, a Covered Business Method patent involves 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. Covered Business Method patents under the AIA, however, exclude technological inventions with a novel and unobvious technological feature that solves a technical problem using a technical solution.
Covered Business Method (CBM) Review is distinct from Post-Grant Review and other post-grant proceedings in that:
- Only a party who is sued or charged with infringement of a Covered Business Method patent may petition for review, which is generally a party with standing to bring a declaratory judgment action in federal court.
- One may not petition for Covered Business Review within nine months following the issuance of a patent subject to first-inventor-to-file provisions; in situations involving first-to-invent patents, Covered Business Method review may be sought within the first nine months.
- A petitioner in a Covered Business Method review of a patent granted under the first-inventor-to-file provisions of the AIA may request to cancel as unpatentable one or more claims of a covered business method patent on any grounds, but limited prior art applies for first-to-invent patents.
- Estoppel following a Covered Business Method review is less extensive than a Post-Grant Review – Covered Business Method review estoppel is limited to those grounds actually raised in the proceeding, but the petitioner is not foreclosed from asserting in a later action any grounds that reasonably could have been raised during the Covered Business Method review.
- Pursuant to AIA provisions, Covered Business Method review is available only until September 2020.
COVERED BUSINESS METHOD REVIEW PROCESS:
STRATEGY & FORESIGHT
Brooks Kushman understands the intricacies and implications of post-grant challenges, how to staff such matters, what resources to deploy, and the technical issues at the heart of each matter. Our attorneys know what it takes to vigorously represent our clients and prevail in such administrative proceedings and coordinate efforts with possible parallel district court litigation and on appeal, recognizing the impact a decision can have on a patent portfolio, market opportunities, and the bottom line. At the same time, our prosecution team works closely with our clients to develop and implement client-specific strategies to help insulate a patent portfolio from a post-grant challenge. In conjunction with our Patent Searchers, we can track related post-grant proceedings, monitor patent filings from our clients’ competitors, and search for and examine relevant prior art—to anticipate potential future challenges and institute proactive measures to minimize any potential risk. In view of the changing landscape and complex and competing interests at play, Brooks Kushman is able to leverage its depth of experience in all facets of IP, to help our clients’ maintain competitive advantage.