Post Grant Review of Business Method Patents Under the AIA

Now that the dust has settled around the enactment of the America Invents Act, companies are starting to think about how these changes may impact their patent strategy, both offensively and defensively.

One provision that has started to gain significant interest is entitled “Transitional Program for Covered Business Method Patents.” The provision provides that, for the next eight years, a company charged with infringement of a “business method patent” can request “post grant review” of that patent if it was issued prior to enactment of the AIA.

But what is a “business method patent?”

In this case, it has a very specific meaning – and one that is narrower than one might think.  The AIA defines a “business method patent” as “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 “business method patent” does not include patents for technological inventions.”

So what’s covered and what’s not?

As of now it’s a bit unclear, but it appears that special-purpose devices (ATMs, optical check reading machines, point-of-sale machines, etc.) would be excluded, while it is likely that general purpose computers simply executing code that implement a financial service might fall within its reach.  There is no clear guidance on the meaning of “business method patent” and many of the related questions raised by the Supreme Court’s decision in Bilski v. Kappos relating to patenting of business methods remain unanswered.

Stay tuned as this provision comes into effect on September 16, 2012 and the challenges start piling up at the PTO and in court.

This post on Patents was authored by Joel Lehrer.

 

 
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