Covered Business Method Review: Last Day to File is September 16, 2020.

Under the 2011 America Invents Act, certain Covered Business Method Patents (CBM) can be broadly challenged as part of a Post-Grant Review (PGR).  CBM filing was opened on September 16, 2012 – 1 year after AIA enactment. So far, about 600 CBM petitions have been filed.

The CBM program is “transitional” — and is set to sunset (i.e., become inactive) soon.  Under the law, the program sunsets “upon the expiration of the 8-year period beginning on the date that the regulations … take effect.”  That takes us to September 16, 2020 — CBM Sunset Date.  The particular language of the law indicates that Section 18 of the AIA is “repealed” as of the sunset date.  However, the provision will still apply to “any petition … filed before the date.”

So, get your petition filed by the 16th of September 2020.

I’ll add a couple of notes.

  1. A powerful aspect of the CBM program is that the patents can be challenged on any ground (including patent eligibility) whereas inter partes review (IPR) proceedings are tightly limited to anticipation and obviousness grounds based upon patents and printed publications.  Post-Grant Review will still be available, but there is a very tight window for filing such a petition (within nine months of patent issuance).
  2. I believe that the last day to file is Sept 16, but I have not fully analyzed this — so do some of your own legwork if you want to wait for the deadline.

Poll:

 

42 thoughts on “Covered Business Method Review: Last Day to File is September 16, 2020.

  1. 4

    With CBMs ending, a good project would be to show what they were used for. Were they primarily used for 101 challenges or a combination of that with a 103 challenge? How many raised any other validity challenges that could not have been raised in an IPR petition?

    1. 4.1

      How many relied on the words of Congress and how many relied on the re-written scrivenings of the Supreme Court?

  2. 3

    An important moment for introspection for my brothers and sisters of the bar (you did take an oath for truth, justice, rights, etc etc ? No?). And all otherwise interested. Back in the day, long ago, well maybe yesterday historically speaking (17th Amendment) in a pro patent country, so called “private laws” were enacted to -> wait for it …. extend patent rights (1, 2, 10 year extensions) via what some would call “private law.”<– private law being defined as real law, passed by the legislative department and signed by the Executive. a private law against those check imaging/presentment patents (as an aside, one heck of a better, faster, cheaper solution). Call me a historical (I happened to love the Constitution) jerk – but I have the notion that these are horses of a different color. An extension of a RIGHT is not the same thing as a post hock administratively condemnation of that very same right. *yeah it’s redundant but leave me alone should you care to comment on the merits.

    1. 3.1

      Perhaps you should have taken a few more moments and translated that introspection into a cogent point.

  3. 2

    The solution is simple – let the CBM program expire and add 101 to IPRs. Granted fixing 101 should be Congress’s first priority considering the mess the Courts have made out of it, but IPRs should be able to address all issues related to patentability. If the PTAB is going to review the claims of a patent, there is no reason to limit the grounds and type of evidence being put forth. Claims that are invalid under 112 or 101 are just as invalid as claims found invalid under 102 or 103. Letting the PTAB do a full review on all grounds would be a huge benefit for all stakeholders (except those with questionable patents who think jurors are better qualified to evaluate complex technical problems better than the APJs).

    1. 2.1

      If the PTAB is going to review the claims of a patent, there is no reason to limit the grounds and type of evidence being put forth

      Go back and read why and how the AIA sold the IPR regime.

      It is the exact opposite of what you proclaim here.

      What you ‘want’ was already available in a much more protecting Article III environment.

      1. 2.1.1

        As usual it is public record you post from. I remember how many times Wikipedia was and still is your go to information.

        1. 2.1.1.1

          What possibly is your point here sarah?

            1. 2.1.1.1.1.1

              Sure sarah, that is how you feel, but what is the actual point that you are trying to make? Do you disagree with something particular that I have stated? What exactly?

              Or are you just venting at phantoms again?

              1. 2.1.1.1.1.1.1

                Your cheering section, and we know who that is, seems to have taken offense. No one had permission to steal my, property, my mail or my proxy.

                1. Great sarah, except it is completely unclear what exactly is my “cheering section,” or why in the world you would ever think that I would be ok with anyone having theft of their things perpetrated.

                  But more to the point here, what is your point here? Do you disagree with something particular that I have stated? What exactly?

                2. And anon who doesn’t have the marbles to answer my post told Dennis to remove it.

                  sarah, I have asked you several times to explain what your attempted point WAS.

                  For you to accuse that I “don’t have the marbles” is preposterous.

                  For you to accuse that I have asked that your posts be deleted is preposterous.

                  Why would I ask you to clarify, more than once, and patiently so, and then turn around and so as you seem to feel?

                  I am trying to GET YOU TO make some sense of what you have posted. Why would I have that removed?

      2. 2.1.2

        Yes, IPRs, by being APA limited to patents and other publications, greatly reduces expensive disputed discovery, conflicting witness testimony, subjective fact issues, etc., that can occur with various other possible validity or enforceability issues in D.C. litigation, and less familiar to APJs coming from the Examining Corps.
        [Although most 101 defenses are raised and decided at the initial stage of D.C. litigation, not requiring a very expensive full blown trial on all possible issues.]

        1. 2.1.2.1

          Careful Paul — this is the type of stuff that may make sarah ‘have feelings.’

    2. 2.2

      Expanding IPRs is a terrible idea. We should be getting rid of IPRs. They are not cheaper, not faster, and not (a fair) alternative to district court. They don’t help small businesses. They only help large corporations. Patent trolls are thriving and legitimate innovators are dying. The PTAB has been a total disaster.

      Most APJs have ZERO technical experience and ZERO common sense. A few might be able to state Newton’s first law, but the average Article III judge or citizen juror has a much better understanding of how physics works. Their decisions are conclusory and infected with hindsight. “It would have been obvious”, “we are persuaded”, “we give little weight”, “we agree with petitioner”…

      The patents they deem to be invalid, are often not invalid in examination or in an Article III court.

      You are treating their decisions applying 103 as if they are correct. Those of us who have been through the tortured procedures and reasoning of the PTAB vigorously disagree. What if they are wrong?

      They can’t be reversed because the Federal Circuit gives them deference. If they say “we agree with petitioner’s expert that it would have been obvious to combine X, Y, and Z” that is considered substantial evidence.

      When the procedures are rigged and the APJs are incompetent or biased, their decisions are questionable.

      1. 2.2.1

        This response reads more like political “talking points” than any kind of reasoned analysis by a practitioner.

        1. 2.2.1.1

          LR, I think you will find that JM is the multiple water balloons filler inventor, not a patent attorney.

          1. 2.2.1.1.1

            I am also an inventor rights advocate and author and registered patent practitioner. I have read thousands of filings covering a wide range of subject matter, sponsored several pro bono causes, and written several amicus briefs.

            Paul, I invite you to a debate on the topic of this comment.

            RESOLVED: IPR should be expanded to include Section 101 and 112 as grounds of unpatentability.

            You will be affirmative and I will be the negative.

            Perhaps Dennis will host?

            1. 2.2.1.1.1.1

              Thanks Josh, but if you had read my 2.1.2 comment you would already know my position was negative to expanding IPR legal scope to 101 and 112 issues, and reasons why. [But note that the Fed. Cir. has already just so expanded as to IPR substitute claims.]
              My objections to some of your comments, especially if you are a patent agent, are to making up things you must know are not correct, and could mislead other inventors. Like saying IPRs are as expensive as D.C. patent litigation, or suggesting that jurors have the technical education [or patent analysis] skills and experience of APJs, who are all patent attorneys, or that small companies never use IPR defenses against large company patents. If you really want to make major patent law changes it will not be accomplished by including refutable hyperbole.

              1. 2.2.1.1.1.1.1

                Go ahead and try to refute my statements. We can start with the first one you list – IPR adds an average of $450K and 3 years to litigation.

                1. JM, any patent attorney regularly exposed to patent litigation costs [I realize patent agents are not] would find asserting $450K for the cost of actually conducted patent litigation amusing. That’s only roughly 700 or less litigation attorney billing hours.
                  But there have already been hundreds of patent suits ended before either party incurred extensive litigation costs because [typically] the litigation was stayed for an IPR outcome, which does not take 3 years, especially in the many cases in which IPR institution is promptly and inexpensively denied. The litigation is not just delayed, it is ended without litigation, when an instituted IPR removes all the claims in suit, which commentators here like yourself claim almost always happens.

                2. Paul, with regard to your [ad hominem wrt to ignorance of patent agents] I am an expert on that. I have spoken and published extensively on that topic, and personally paid millions of dollars to attorneys, experts, ESI providers, and mediators.

                  IPR takes 2.8 years minimum. 18 months at USPTO and 16 months at Federal Circuit. There is often a remand which adds and additional 2.8 years. Arthrex is now adding an additional 3 years to many cases.

                  The only scenarios where it is cheaper is when the patent owner 1) abandons their patent rights in exchange for dismissal of the IPR, or 2) loses all their claims after 3 years.

                  Here is my case that I had to settle after 4 years because of PTAB costs and delays. link to joshtheballoonguy.org

              2. 2.2.1.1.1.1.2

                1) All Patent Judges, which is their official title. They are not APJs.

                2) IPRs are not as expensive as DC litigation if only one is filed but they can add up to more expensive than a single DC litigation. And as in all litigation when you add another cause of action it is cumulative.

                3) Adding 101 and 112 to IPRs would be terrible unless the patent judges were made more independent.

                The fact is that the reason that we have IPRs is two fold. SV wanting to weaken patents and the court system wanting to get rid of all the patent suits. Roberts does not want the patent lawsuit within the federal court system as they are too burdensome. The fact is that if you read more widely in law, you will find out that the DCs are overloaded and that in many areas of law such as criminal law people are not given a chance at justice because the DCs are too overloaded.

                The solution I think that is probably best is to expand the IPRs into something more similar to DC legislation with patent judges being completely independent of the USPTO.

                The whole problem right now is that the patent judges are hired and controlled by the PTO and they started off with a core of people to burn down the patent system. I was one of the interviewees that made it to the final step. And I feel like where I failed was not professing the need to get rid of a lot of worthless patents. The CJ asked me a question directly related to this question and when I didn’t answer it the way he wanted to hear I was immediately dismissed. They were hiring for people to be part of a hit squad.

                1. Plus do you realize all the controls on patent judges?

                  There are lots of ways they can be controlled.

                  For example, don’t behave, then we put you back into the ex parte work, which is far less desirable.

                2. Perhaps a minor nit, but “1) All Patent Judges, which is their official title. They are not APJs.” appears to be trying to play semantics that simply does not carry.

                  link to search.uspto.gov

                  EVERY result clearly lists the role as administrative patent judge and NOT merely ‘patent judge.’

                  The USPTO is an Administrative Agency body, and it is beyond clear that the Administrative Procedures Act fully applies.

                  What point then, of your attempt to delete the “Administrative” from the title?

                3. NW, much of what you state in your paragraph 4 are things I have also noted in comments here.
                  The actual enabling statute, 35 USC 6, names the Board judges as “administrative patent judges” [twice] and says that they “shall be persons of competent legal knowledge and scientific ability who are appointed by the Director.”

                4. Yeah I didn’t read that carefully. I was thinking you were calling them ALJs, which they are not.

                  APJs are less independent than the ALJs for many agencies.

                  And it should probably be the subject of a whole post comparing the independence of the different administrative judges among the different agencies.

                5. Thanks for the clarifications and the post about enabling statute (a critical point in admin law matters).

        2. 2.2.1.2

          Well, LR, my post commenting on Josh never made it out of the filter, but the gist is reflected in some of the comments above.

    3. 2.3

      Yes, sure that. It is simple. Eureka!! CBM has been swallowed by Alice. Pass Go!, Collect $200.

  4. 1

    Also, the Fed. Cir. has narrowed CBM patent scope decisionally, and its statutory limitations include requiring that “..the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.”
    Although there had been some talk of extending CBMs beyond this September, it never went anywhere in Congress. Reportedly the 2011 pressure for the last-minute addition of CBMs to the AIA had come largely from banks concerned about broad functional business methods then being patented than might cover non-public features already built into their existing software. This was before the PTO set up the issue-restricting business methods examining group, and the impact of Bilski and Alice 101 rejections.

    1. 1.1

      Yes, because nobody should be concerned with the reach of the very large and very established Big Bank Efficient Infringement machine…

      1. 1.1.1

        +1: . . . ’cause, well, you know; big banks have done oh so much for America.

      2. 1.1.2

        Exactly. CBM is ‘private law’ if I was not clear above. But in this matter, in converse to IMHO a conventional Constitutional view of rights, it’s private law in favor of the serial infringer, not a patent extension, which IMHO have very different ramifications.

        1. 1.1.2.1

          I am not sure that your emphasis on “private law” is making your point any more cogent.

          I think it is rather having the opposite effect.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture