Transitional Program for “Covered Business Method Patents”

  • Transitional Program will be established by the Director and will employ the standards and procedures of Post Grant Review.
  • A “covered business method patent” relates to Financial Products or Services and not “technological inventions.”
  • The Director of the PTO will issue regulations for determining whether a patent is for a technological invention.
  • A person or entity can file a petition for transitional proceeding only if sued for infringement or charged with infringement.
  • Effective date is one year from the date of enactment of Act, and sunsets 8 years from the effective date of the transitional program.

Request for Stay

  • A party may seek a stay of a civil action alleging infringement pending the outcome of the transitional proceeding, and the court shall decide whether to enter the stay based on four factors.
  • Immediate interlocutory appeal to the Federal Circuit of a district court’s decision on the stay.

ATM Exemption for Venue Purposes

  •  An automated teller machine shall not be deemed to be a regular and established place of business of purposes of establishing venue.

No Tax Strategy Patents

  • Any strategy for reducing, avoiding, or deferring tax liability shall be deemed insufficient to differentiate a claimed invention from the prior art.
  • Does not apply to methods for preparing a tax or information return or other tax filing, or for methods, apparatus, technology, or computer software used solely for financial management.
  • Effective on the date of enactment of the AIA.
  • Applies to all patent applications pending on or filed after the effective date, and to any patent issued on or after the effective date. Does not affect tax strategy patents currently in existence.