Covered business method (CBM) review - an administrative trial conducted to determine the validity of a patent - can be an attractive tool for accused patent infringers looking to challenge a patent. However, in a recent decision, the Patent Trial and Appeal Board (PTAB) has reinforced a powerful loophole which allows patent holders to avoid CBM review, thus making challenges particularly difficult for petitioners.
In its September 2017 ruling, the PTAB refused to adopt a "time of filing rule" that would have required judges evaluating CBM petitions to assess the patent's claims as they existed when the petition was filed, rather than as they are at the time the PTAB decides whether or not to initiate a review.
Speaking to Law360, Jeffrey Snow, Co-Chair of Pryor Cashman's patent litigation and prosecution practices, explained that not having a time of filing rule in place at the PTAB creates a disincentive for a potential challenger to invest the time and money to mount a CBM challenge. "Obviously it can be pulled out from under them after they've submitted it," he said.
The CBM program was established in 2011 and is set to expire in 2020. Congress has not yet indicated whether it plans to extend the program.
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