• Home
  • About Me
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent Prosecution Services
    • Patent Defense Services
    • Patent Enforcement Services
    • Trademark Search Services
    • Trademark Prosecution Services
    • Trademark Enforcement Services
    • Trademark Defense Services
    • Patent and Trademark Licensing Services
    • Worldwide Patent and Trademark Services
  • Learning Resources
    • Invention Agreements
      • What is an NDA and when to use them?
      • How to use a contract to protect your invention?
      • Working with others without losing your IP rights
      • Patent Assignments for Independent Contractors
      • Losing Invention Rights When Hiring or Collaborating with Others
      • Avoid Problems: Get an Invention Assignment Agreement
    • Protect Inventions
      • Do you need to get your patent attorney to sign an NDA?
      • Patent protection benefits and why every inventor should consider getting one
      • Reasons to only market your invention after securing patent pendency
      • 8 tips to successfully protect your idea
      • Four types of intellectual property you can use to protect your idea and how to use them
      • Can a confidentiality agreement protect me like a patent application?
      • Dangers of 1 yr grace period under first-inventor-to-file system
      • File a patent application before telling others about the invention
      • Risks and benefits of securing software patent protection
      • Strategy to overcome patentable subject matter rejection
      • Best uses for design patents
      • Overview of Patents and Intellectual Property
      • Pros and cons of filing a continuation-in-part application
      • Benefits of Patent Protection
      • Continuation patent application and related divisional and continuation in part
      • Misconceptions of Provisional Patent Applications
    • How Patent Applications Work: the Basics
      • How to respond to an office action?
      • Request for non-publication of a patent application
      • Anatomy of a Patent Document
      • How to write a broad patent application?
      • Design patents: pros and cons
    • Patent process
      • Overview of the examination process within the USPTO
      • What is a patent search and How to do it?
      • Patent attorneys, agents and the USPTO can help with the patent process
      • Highs and lows of securing patent protection for your invention
      • Patent Process: Invention to Patent Granted (Comprehensive)
      • Benefits of a Patent Search
      • Overview of Patent Process
      • Patent process timeline and major milestones
      • Patent process, overall steps and procedures
      • What is the Patent Office procedure after filing a patent application?
      • USPTO Website
    • Patent costs
      • How much does it cost to get a utility patent?
      • Provisional Patent Application: Cheap Alternative?
      • Patent Cost Framework and cash flow
      • Provisional patent application: a cheap option?
      • Cheap provisional patent applications
    • Worldwide patents
      • Pros and cons of securing worldwide patent protection and their steps
      • Foreign patent filing to secure protection in other countries
    • Responding to Office Actions
      • Overview of Office Actions
    • Patent infringement
      • Basics of writing a patent claim for a patent application
      • What are the patent marking requirements and its benefits?
      • Avoiding Patent Infringement
      • Can I Copy My Competitor’s Product?
      • Can I Copy My Competitor’s Product? (Design Patent)
    • Trademarks
      • Trademark Registration: common law, state and federal
      • How to obtain a federal trademark registration?
      • How to select a trademark?
        • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Patent Attorney | Orange County | OC Patent Lawyer

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Patent Infringement / Post Grant Proceedings / Reigning back applicability of Covered Business Method Review

Reigning back applicability of Covered Business Method Review

January 11, 2017 by James Yang

Covered Business Method ReviewThe applicability of Covered Business Method Review was significantly reigned back by the Federal Circuit in Unwired Planet, LLC. v. Google Inc. (Fed. Cir. 2016).  Covered Business Method Review is a type of post grant proceeding at the USPTO wherein a third party, usually a defendant or an accused patent infringer, challenges the validity of a patent in order to avoid patent infringement liability or to put pressure on the patent owner to negotiate a settlement agreement.

For defendants or accused patent infringers, a Covered Business Method Review is beneficial because any type of prior art reference could be raised and used to invalidate the patent including public demonstrations and verbal offers for sales (i.e., non-documentary types of prior art).  In other types of post grant proceedings, the type of prior art references that could be raised and used to invalidate the patent was severely limited to printed publications (e.g., printed advertisements, etc.), pre-grant patent publications and issued patents.  Hence, the petition to have the Covered Business Method Review instituted was easier to institute and win than other post grant proceedings because a broader range of invalidating prior art could be used.  Covered Business Method Review was thus available to many potential patent infringement cases.

Another advantage to Covered Business Method Review was the limited scope of estoppel should the dispute between the parties be pursued in court.  In other types of post grant proceedings, the defendant or the accused patent infringer would be estopped for using any prior art documents that could have been raised during the post grant proceedings.  Not so with a Covered Business Method Review.    The accused patent infringer is only estopped from raising the same prior art references during litigation that the third party used during Covered Business Method Review but all other potentially invalidating prior art references is still fair game during litigation.  .

Although the Covered Business Method Review is beneficial for defendants and accused patent infringers, its applicability under the statue was limited to financial related patents.  In particular, under the America Invents Act (“AIA”), a Covered Business Method Review is only applicable to “a patent that claims 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, except that the term does not include patents for technological inventions.”  AIA §18(d)(1).

However, the Patent and Trademark Appeal Board (“Board”) began applying a broader standard for instituting a Covered Business Method Review,  a standard that was not limited to the statutory definition.  The Board added to the statutory definition by additionally allowing for Covered Business Method Review of patents that claimed activities not only financial in nature but more broadly incidental or complementary to a financial activity.

The incidental or complementary language used by the Board was based on a response made by the Patent Office to a comment concerning the statutory definition of when Covered Business Method Review is appropriate when the AIA was being legislated but such language was never adopted even when the Patent Office had an opportunity to do so.  Simply put, the Patent Office made the comment during drafting of the legislation but never adopted the language when making the rules to implement the Covered Business Method Review procedures.

The Federal Circuit explained that the broader standard applied by the Board in determining applicability of Covered Business Method Review was just too broad.  In essence, the broader definition could encompass almost any patent claim given the broad meanings of “incidental” or “complementary.”  For example, a patent for a novel light bulb that is found to work well in a bank vault could be up for Covered Business Method Review because the bulb was used in the operation of a bank.  A ditch digger could be a Covered Business Method Review because the dirt could be sold.  The Federal Circuit explained that the statute’s language was not so broad.

The Federal Circuit held that applicability of Covered Business Method Review is limited only to those patents as specified by the statute, specifically, to patents directed to performing data processing or other operations used in the practice, administration or management of a financial product or service.

For now, the applicability of Covered Business Method Review of patents has been reigned back – which is good news for patent owners because the ability to invalidate a patent based on CBM review is applicable to a more limited universe of patents.

I invite you to contact me with your patent questions (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

  • Facebook
  • Twitter
  • LinkedIn

Filed Under: Post Grant Proceedings Tagged With: Covered Business Method

Author: James Yang

Helping entrepreneurs and mid-size businesses since 2004. Call me at (949) 433-0900 to schedule your free initial consultation. Read More…

Professional Profile

James Yang Business Patent Attorney

James Yang, Patent Attorney

James Yang is a patent attorney whose practice encompasses all area of intellectual law including patents, trademarks, copyrights and trade secrets. Professional Profile

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?

New Book Release

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

Peer Recognition

top attorney patent application
client choice patent application
Rated by Super Lawyers
AV Preeminent rating

RECEIVE PATENT UPDATES

Stay up to date on major changes and get tips on patent prosecution.

We respect your privacy.

Popular Posts

    Patent process overview
    Patent process explained
    How much does a patent cost?

Services

  • Patent Prosecution Services
    Patent Defense Services
    Trademark Prosecution Services
    See All Services

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete terms of use

ATTORNEY ADVERTISEMENT

© 2019 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney