Lectures & Articles

Transitional Program for Covered Business Method Patents

With implementation of the Leahy-Smith America Invents Act (AIA),¹ a third party will be able to request a post-grant review of an issued business method patent based on prior art starting September 16, 2012, and up to September 16, 2020. Only the real party in interest (third party requester) or privy that has been sued or charged with infringement can file such a transitional proceeding.

Regarding procedures and upcoming rules on post-grant review of business method patents, as stated by the USPTO:

The transitional program for covered business method patents (TPCBM) is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent. TPCBM proceedings employ the standards and procedures of a post grant review, with certain exceptions. For example, for first to invent patents only a subset of prior art is available to support the petition. Further, a person may not file a petition for a TPCBM proceeding unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or charged with infringement under the patent. The procedure for conducting TPCBM review will take effect on September 16, 2012, but only applies to covered business method patents. The program will sunset for new TPCBM petitions on September 16, 2020.

Additional information is forthcoming.

It is worth noting that estoppel for this type of post-grant proceeding applies wherein the third party requester cannot participate in any USPTO proceeding or file any court action against the patent which asserts that a claim in the patent is invalid on any ground that the petitioner raised (no “could have raised” language) during the transitional proceeding.

1. Now Public Law 112-29 (Sept. 16, 2011).