Covered Business Method Patents
The AIA further provides a new transitional procedure for challenging the validity of any already-issued financial business method patents that are not directed to technological inventions. The Transitional Review uses the same rules as Post Grant Review except that, 1) it is applicable only to financial business method patents; 2) the requester must have been sued or accused of infringement and 3) the estoppel provisions for subsequent court or ITC proceedings only preclude what was actually raised in the Transitional Review. This procedure specifically addresses financial business method patents issued before the U.S. Supreme Court's Bilski decision. That decision put the validity of many such patents into question. Parties facing possible claims for infringement of such patents will likely find this procedure useful. A Transitional Review proceeding may not be instituted during the period of time that a Post Grant Review proceeding could be instituted.
In August 2012, the PTO issued new rules governing the new post grant procedures established by the AIA. For more on these procedures and rules, see Final AIA Rules for Post Grant Review, Inter Partes Review and Transitional Program for Covered Business Method Patents.
Procedures for PTO reconsideration of patent validity, before and after AIA
For more information about procedures and strategy for post grant reconsideration of U.S. patents, please contact RatnerPrestia.