Knobbe/Martens: Intellectual Property Law

Covered Business Methods

What Is Knobbe Martens’ Experience with Covered Business Method Reviews?

We have been counsel of record in over 20 Covered Business Methods Reviews, representing clients from initial filings, through institution determinations, final decisions, and on appeals to the Federal Circuit.  For patent owners, we have achieved unparalleled success obtaining denials of institution. We have also successfully represented petitioners in defeating covered business method patents.

What is a Covered Business Method?

A Covered Business Method (CBM) may include a method or corresponding apparatus for performing data processing or other operation in the practice, administration, or management of a financial product or service. It does not include technological inventions. Covered Business Methods review is a special procedure for challenging such patents before the U.S. Patent and Trademark Office (USPTO).

When can a Covered Business Method Review be requested?

When you have been sued or charged with infringement of a CBM patent, you may ask for CBM review from the Patent Trial and Appeal Board. This review is available through September 16, 2020, except for those patents issued under the AIA that are eligible for Post-Grant Review (PGR). In general, a petitioner may challenge a CBM patent on the grounds available under a PGR, but additional grounds may also be available, depending on whether the patent was issued under the old patent laws or under the AIA. Once initiated, a Covered Business Method Review will largely employ the same fees and procedures as a PGR.

What are the government fees associated with a Covered Business Method Review?

The government fees are:

  • $12,000 - CBM request fee (up to 20 claims);
  • $18,000 - CBM post-institution fee (up to 15 claims);
  • $250/claim - CBM request fee for each claim over 20; and
  • $550/claim – CBM post-institution fee for each claim over 15. 

 

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