The Effect of Covenants-Not-to-Sue on Covered Business Method Review Standing

The America Invents Act includes specific proceedings for reviewing the patentability of covered business method patents (“CBM review”), which are patents that claim a method, apparatus, or operation used in the practice, administration, or management of a financial product or service.  37 C.F.R. § 42.301(a).  According to 37 C.F.R. § 42.302(a), CBM review may not be instituted “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 the patent.  37 C.F.R. § 42.302(a).  Standing to institute a CBM review proceeding requires “a real and substantial controversy regarding infringement. . . such that the petitioner would have standing to bring a declaratory judgment action in Federal court.”  Id.

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