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Transitional Program for Covered Business Method Patents

By Eugene T. Perez

As of September 16, 2012, a third party can request a post-grant review of an issued business method patent (hereinafter “PGR for CBM”) based on prior art.  PGR for CBM proceedings employ the standards and procedures of a PGR, with certain exceptions. For example, for first to invent patents, only a subset of prior art is available to support the petition. As another example, PGR for CBM is a transitional program and will end on September 16, 2020.  Also, 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.

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 as in regular PGR and IPR) during the transitional proceeding.