The USPTO CBM process explained
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The USPTO CBM process explained

flowdiagramcbm-45.jpg

The USPTO Patent Trial and Appeal Board has given its first ruling in the new CBM review procedure. Managing IP explains how the process works

Covered Business Method (CBM) review is a post-grant procedure introduced under the America Invents Act (AIA). It allows alleged infringers to challenge the validity of business method patents “covered” under Section 18 of the AIA through the USPTO’s appeals system, rather than through litigation.

CBM review is only available for patents which relate to “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”. Patents concerning “technological inventions” are not eligible for the procedure.

In order to initiate a CBM review, the petitioner must have been sued for infringement of the patent in question.

CBM review is an interim measure which will be available until September 16, 2020. The USPTO will not accept any new petitions for CBM reviews on or after that date.

The chart below outlines the various stages a patent may go through under CBM review.

Opponents of CBM review claim that lobbyists from the financial services industry pressured Congress to include the provision as part of the AIA.

flowdiagramcbm.jpg

See also: analysis of the first CBM review decision in SAP v Versata (Managing IP subscription or free trial required).

more from across site and ros bottom lb

More from across our site

High-earning businesses place most value on the depth of the external legal teams advising them, according to a survey of nearly 29,000 in-house counsel
Kilpatrick Townsend was recognised as Americas firm of the year, while patent powerhouse James Haley won a lifetime achievement award
Partners at Foley Hoag and Kilburn & Strode explore how US and UK courts have addressed questions of AI and inventorship
In-house lawyers have considerable influence over law firms’ actions, so they must use that power to push their external advisers to adopt sustainable practices
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Counsel say they’re advising clients to keep a close eye on confidentiality agreements after the FTC voted to ban non-competes
Data from Managing IP+’s Talent Tracker shows US firms making major swoops for IP teams, while South Korea has also been a buoyant market
The finalists for the 13th annual awards have been announced
Counsel reveal how a proposal to create separate briefings for discretionary denials at the USPTO could affect their PTAB strategies
The UK Supreme Court rejected the firm’s appeal against an earlier ruling because it did not raise an arguable point of law
Gift this article