Seattle Patent Attorney | Seattle Trademark Lawyer

Ruttler Mills PLLC

Seattle Patent Attorneys and Trademark Lawyers

206-838-6400 Complimentary 15 Minute Consultation

When is a Patent Subject to CBM Review

Jim Ruttler, Patent Attorney

Posted Thursday, February 23, 2017 by Jim Ruttler

There is a procedure to challenge business method patents that sunsets in September of 2020. Until that time, it is a popular way to challenge patents because it allows for review under all statutory provisions, including Section 101 for ineligible subject matter. The IPR alternative to challenging patents is not as accommodating and allows for challenges only for not being new or for being obvious using prior art.

The problem for CBM review is that it only applies under statute to claims that are directed to a financial service. Many challengers attempt to squeeze in technical inventions into this category by arguing that CBM applies whenever the claims could be used in a financial service environment. Obviously, this argument would sweep everything into CBM because every technology could be used in a financial services environment.

Fortunately, the Courts have limited CBM to only those claims that actually claim a financial service. Unwired Planet and Secured Axcess are two cases of the Federal Circuit that are on point here.

For applicants, it is therefore important to be careful what you claim. Should one claim be determined to be directed to a financial service, all the claims can be swept into a CBM challenge later and easily invalidated using Section 101 for being an abstract idea.

Ruttler Mills PLLC
One Union Square, 1730, 600 University Street, Seattle, Washington 98101 US
47.6097570-122.3321200
Phone: (206) 838-6400

News and Announcements

Tuesday, January 24, 2017
More Rumors and No Answers Regarding Director Lee learn more +
Thursday, January 19, 2017
Michelle Lee Rumored to Be Staying as PTO Director learn more +
Tuesday, August 30, 2016
U.S. Patent Office: China Is Working Toward Strong Patent System learn more +
Tuesday, June 14, 2016
Supreme Court in Halo: Treble Damages are Back learn more +