Transitional Program for Covered Business Method Patents
Covered Business Method - Rules
Section 42.300: Procedure; pendency.
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Section 42.300 sets forth policy considerations for covered business method patent review proceedings. (a) A covered business method patent review is a trial subject to the procedures set forth in subpart A of this part and is also subject to the post-grant review procedures set forth in subpart C except for §§ 42.200, 42.201, 42.202, and 42.204.
(b) A claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.
(c) A covered business method patent review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge.
(d) The rules in this subpart are applicable until September 15, 2020, except that the rules shall continue to apply to any petition for a covered business method patent review filed before the date of repeal.
Section 42.300(a) provides that a covered business method patent review is a trial and subject to the rules set forth in subpart A and also subject to the post-grant review procedures.
Section 42.300(b) provides that a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification in which it appears.
Section 42.300(c) provides a one-year timeframe for administering the proceeding after institution, with a six month extension for good cause.
Section 42.300(d) provides that the rules in subpart D are in effect until September 15, 2020, except that the rules shall continue to apply to any covered business method patent review filed before the date of repeal.
Section 42.302: Who may petition for a covered business method patent review.
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(a) A petitioner may not file with the Office a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent. Charged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.
(b) A petitioner may not file a petition to institute a covered business method patent review of the patent where the petitioner, the petitioner’s real party-ininterest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.
Section 42.302(a) provides that a petitioner may not file a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent.
Section 42.302(b) provides that a petitioner may not file a petition to institute a covered business method patent review of the patent where the petitioner, the petitioner’s real party-ininterest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.
Section 42.303: Time for filing.
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Section 42.304: Content of petition.
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In addition to any other notices required by subparts A and C of this part, a petition must request judgment against one or more claims of a patent identified by patent number. In addition to the requirements of §§ 42.6, 42.8, 42.22, and 42.24 the petition must set forth:
(a) Grounds for standing. The petitioner must demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.
(b) Identification of challenge. Provide a statement of the precise relief requested for each claim challenged. The statement must identify the following:
(1) The claim;
(2) The specific statutory grounds permitted under paragraph (2) or (3) of 35 U.S.C. 282(b), except as modified by section 18(a)(1)(C) of the Leahy-Smith America Invents Act (Pub. L. 112–29, 125 Stat. 284 (2011)), on which the challenge to the claim is based;
(3) How the challenged claim is to be construed. Where the claim to be construed contains a means-plusfunction or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function;
(4) How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. Where the grounds for unpatentability are based on prior art, the petition must specify where each element of the claim is found in the prior art. For all other grounds of unpatentability, the petition must identify the specific part of the claim that fails to comply with the statutory grounds raised and state how the identified subject matter fails to comply with the statute; and
(5) The exhibit number of supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.
(c) A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition.
Section 42.304(a) provides that a petition under this section must demonstrate that the petitioner has grounds for standing.
- To establish standing, a petitioner, at a minimum, would be required to certify with explanation that the patent is a covered business method patent and that the petitioner meets the eligibility requirements.
- This requirement is to ensure that a party has standing to file the covered business method patent review and would help prevent spuriously instituted reviews.
- Facially improper standing will be a basis for denying the petition without proceeding to the merits of the decision.
Section 42.304(b) requires that the petition identify the precise relief requested for the claims challenged.
- Specifically, the rule requires that the petition identify each claim being challenged, the specific grounds on which each claim is challenged, how the claims are to be construed, why the claims as construed are unpatentable, and the exhibit numbers of the evidence relied upon with a citation to the portion of the evidence that is relied upon to support the challenge.
- The rule provides an efficient means for identifying the legal and factual bases supporting a prima facie case of relief and would provide the patent owner with a minimum level of notice as to the basis for the challenge to the claims.
Section 42.304(c) provides that a petitioner seeking to correct clerical or typographical mistakes could file a motion to correct the mistakes.
- The rule also provides that the grant of such a motion would not alter the filing date of the petition.
