37 CFR 42.302: Who may petition for a covered business method patent review

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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42.302    Who may petition for a covered business method patent review.

  • (a) A petitioner may not file with the Office a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent. Charged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.
  • (b) A petitioner may not file a petition to institute a covered business method patent review of the patent where the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.
  • (c) A petitioner may not file a petition to institute a covered business method patent review of the patent where, before the date on which the petition is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) added, 80 FR 28561, May 19, 2015, effective May 19, 2015]