Sterne, Kessler, Goldstein & Fox Publishes '12 Observations' Report On Covered Business Method Review

Jan 30, 2014, 12:32 ET from Sterne, Kessler, Goldstein & Fox

WASHINGTON, Jan. 30, 2014 /PRNewswire/ -- Sterne, Kessler, Goldstein & Fox P.L.L.C. (Sterne Kessler), an intellectual property law firm in Washington, DC, announced today the publication of 12 Observations On Covered Business Method Review – a six-page report featuring statistics, trends, and insights drawn from Patent Trial and Appeal Board (PTAB) decisions in the time since the proceeding was implemented by the America Invents Act of 2011.

"Covered business method (CBM) review is particularly noteworthy for its special eligibility criteria and limitations on estoppel not present in other post-grant options like inter partes review," said Michelle K. Houlobek, Sterne Kessler Director and co-author of the 12 Observations report.  "Because of the special features, petitioners were initially cautious about approaching CBM as a post-grant tool, though we are now seeing an uptick in the number of filings. The decisions reached by the PTAB can offer valuable insights into how these proceedings are handled."

12 Observations offers insights into how the PTAB is conducting the new proceedings and addresses the following topics in more detail:

  • Expedited scheduling
  • How the PTAB views legislative history
  • Terminating a CBM
  • Filing multiple CBMs on the same patent
  • Filing a CBM on behalf of a customer
  • How eligibility is determined
  • Which grounds have been challenged most
  • Using §102(e) art

"Petitioners and patent owners alike can learn from our observations," added Michael V. Messinger, Sterne Kessler Director and 12 Observations report co-author.  "Sterne Kessler is involved in more contested proceedings than any other firm, including 10 percent of current petitions for covered business method review. We leveraged this first-hand experience, as well as our legacy work in more than 50 interferences and over 400 ex parte and inter partes reexamination proceedings, while drafting this report." 

To download a full copy of the report, click here.  Learn more about Sterne Kessler's patent office litigation services, visit

Sterne, Kessler, Goldstein & Fox P.L.L.C. is one of the largest Washington, DC-based law firms dedicated solely to the protection, transfer and enforcement of intellectual property rights. Sterne Kessler's 160 patent attorneys, agents and technical specialists represent a broad range of entities, including emerging and established companies, venture capital firms, universities and select individuals.  In 2012, Sterne Kessler published Patent Office Litigation, a two-volume handbook focused on the new contested proceedings under the America Invents Act.


SOURCE Sterne, Kessler, Goldstein & Fox