Observations on the CBM patent review


Michelle K. Holoubek and Michael V. Messinger

Observations on the CBM patent review

The newly-created Covered Business Method proceeding is noteworthy for its special eligibility criteria and limitations not present in other post-grant options. Michelle K. Holoubek and Michael V. Messinger report.

When the America Invents Act (AIA) was passed in 2011, it ushered in a number of new post-grant options to challenge and defend patents at the US Patent and Trademark Office (USPTO) including the Covered Business Method (CBM). A year on, we look at 14 particular challenges and opportunities posed by this unique procedure.

1. More than financial services. CBM was largely imagined as a procedure for the financial services industry. In light of some Supreme Court decisions, notably In re Bilski, Congress determined that certain financial services patents needed a special proceeding to test patentability. But in practice, a variety of industries have availed themselves of CBM review. Over 40 percent of CBMs have been filed by technology companies, as opposed to financial entities.

2. Fast. The Patent Trial and Appeal Board (PTAB) is serious about its one-year timeline for completing a trial, and routinely compresses trial schedules. While the patent owner might typically have three months after the decision to file its response, in many cases the PTAB is scheduling only two months. In such cases, the petitioner has two months to file its reply as well. Petitioners and patent owners can argue against the expedited schedule, but they are not always successful.

CBM, AIA, patents, PTAB