USPTO says CBM patent designations can’t be appealed
The designation of a patent as a covered business method (CBM) patent is unappealable, the US Patent and Trademark Office (USPTO) and Emerson Electric have argued.
According to a USPTO brief, submitted to the US Court of Appeals for the Federal Circuit this month, the US Supreme Court’s 2019 Thryv v Click-to-Call ruling bars any challenge to its decision to submit a patent for CBM review.
The Federal Circuit is considering an appeal from wireless tech developer Sipco as to whether its patent is eligible for CBM review.
CBM reviews are an administrative proceeding of the USPTO to determine whether a patent is valid.
In Thryv, the Supreme Court ruled that USPTO decisions on whether a patent validity challenge was time-barred could not be appealed to the US Court of Appeals for the Federal Circuit.
That’s because the USPTO’s assessment of whether a challenge is time-barred is “closely tied” to the office’s decision whether to institute a review, which is unappealable.
That case dealt with the inter partes review (IPR) mechanism, but the USPTO and Emerson argue that this logic equally applies to CBM reviews.
Both parties argue that the designation of a CBM patent is “closely tied” to the decision to institute a CBM review which, as with IPRs, they say cannot be appealed.
Emerson is challenging the validity of a patent owned by Sipco under the CBM review system.
But Sipco has argued that the USPTO’s designation of its patent as a CBM patent was incorrect, and that it therefore does not qualify for the review.
The tech company also argues that Thryv does not apply to CBM reviews at all. In the absence of any explicit instruction otherwise, courts should allow judicial reviews of federal agencies’ actions, Sipco argued.
But the USPTO says that Sipco is still free to challenge any conclusion that its patent is invalid to the Federal Circuit, and that the CBM review should be allowed to go ahead.
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