Transitional Program for Covered Business Method Patents
Covered Business Method - Statutes
Section 18 of the AIA provides that the Director will promulgate regulations establishing and implementing a transitional program for the review of covered business method patents.
- The AIA provides that the transitional proceeding will be regarded as a post-grant review and will employ the standards and procedures as a post-grant review, subject to certain exceptions.
- For instance, a petitioner in a covered business method patent review may request to cancel as unpatentable one or more claims of a patent on any ground relating to invalidity of the patent or any claim, with a few exceptions.
- Additionally, the determination by the Director of whether to institute a covered business method patent review will be final and nonappealable.
- The AIA provides that 35 U.S.C. 321(c) and 35 U.S.C. 325(b), (e)(2), and (f) will not apply to a transitional proceeding.
Section 18(a)(1)(B) of the AIA specifies that a person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or 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.
Section 18(a)(1)(C) of the AIA further provides that limited prior art shall apply for those challenged covered business method patents granted under first-to-invent provisions.
- A petitioner in a transitional proceeding who challenges the validity of 1 or more claims in a covered business method patent on a ground raised under section 102 or 103 as in effect on the day before the effective date set forth in section 3(n)(1), may support such ground only on the basis of prior art that is described by section 102(a) of such title (as in effect on the day before such effective date); or prior art that discloses the invention more than 1 year before the date of the application for patent in the United States; and would be described by section 102(a) of such title (as in effect on the day before the effective date set forth in section 3(n)(1)) if the disclosure had been made by another before the invention thereof by the applicant for patent.
Section 18 of the AIA provides that the Director may institute a transitional proceeding only for a patent that is a covered business method patent.
- The AIA specifies that a covered business method patent is 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.
The AIA provides that the transitional program for the review of covered business method patents will take effect on September 16, 2012, one year after the date of enactment, and applies to any covered business method patent issued before, on, or after September 16, 2012.
