By: Daniel A. Geselowitz, Ph.D.

The America Invents Act introduced three administrative trial proceedings allowing a third parties to challenge the validity of existing patents: 1) Post-grant review (PGR); 2) Inter partes review (IPR); and 3) Covered business method (CBM) patent review. These went into effect in September 2012. As of September 2015, a majority (90%) of the AIA petitions for these proceedings have been for IPR, with 10% for CBM and only a tiny fraction (0.3%) for PGR. While PGR and IPR apply to any subject matter of the patent, the CBM is unique in being limited specifically to patents for financial products and services, and not to technological inventions.

The recent case of Chicago Mercantile Exchange, Inc. v. 5th Market, Inc. CBM2015-00061 (PTAB July 16, 2015, Paper No. 9) is the recent PTAB ruling on the petition, which granted institution of the CBM review. This case is of interest from the standpoint of patent ineligibility under 35 U.S.C. §101. —click here to read more—