Scott Daniels | January 28, 2013
One of the new post-issuance proceedings created by the America Invents Act involves “covered business method” (CBM) patents. The AIA authorizes a party to challenge the validity of such a patent, according to the procedures created by the AIA for post-grant review proceedings. On Friday, in Liberty-Mutual v. Progressive Cas. Ins. Co., CBM2012-00002, the APJs addressed the issue of whether the challenged patent was an eligible CBM patent.
Section 18(d)(1) of the AIA defines a CBM patent as one
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.
(Emphasis added). The PTO’s implementing rules provide guidance on what the AIA means by the “technological inventions” exception.
In determining whether a patent is for a technological invention . . . , the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.
(37 CFR § 42.301(b)).