C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart D—Transitional Program for Covered Business Method Patents

37 C.F.R. § 42.302

Who may petition for a covered business method patent review

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(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.

[77 FR 48731, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015]
Notes of Decisions
Cited in 7 cases (4 in the last 5 years), 2014–2024 · leading case: Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350 (Fed. Cir. 2017).
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Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350 (Fed. Cir. 2017). · cites it 4× “” 37 C.F.R. § 42.302 (a). RETURN MAIL, INC.”
Alexsam, Inc. v. Mastercard Int'l Inc. (Fed. Cir. 2024). · cites it 3× “AlexSam opposed institution, arguing that Mas- terCard lacked standing under 37 C.F.R. § 42.302 (a), which states: “A petitioner may not file with the Office a petition to institute a covered business method patent re- view of the patent unless the petitioner .”
Alexsam, Inc. v. Mastercard Int'l Inc. (Fed. Cir. 2024). · cites it 3× “AlexSam opposed institution, arguing that Mas- terCard lacked standing under 37 C.F.R. § 42.302 (a), which states: “A petitioner may not file with the Office a petition to institute a covered business method patent re- view of the patent unless the petitioner .”
Alexsam, Inc. v. Mastercard Int'l Inc. (E.D.N.Y 2020). · cites it 3× “” 37 C.F.R. § 42.302 (a). unsuspected, disclosed and undisclosed, relating to Licensed Transactions arising or occurring before or during the term of this Agreement.”
Alexsam, Inc. v. Mastercard Int'l Inc. (Fed. Cir. 2022). “AlexSam opposed institution in its pre- institution patent owner response, arguing that Master- Card lacked standing under 37 C.F.R. § 42.302 (a)—a re- quirement for CBM review.”
Alexsam, Inc. v. Mastercard Int'l Inc. (Fed. Cir. 2022). “AlexSam opposed institution in its pre- institution patent owner response, arguing that Master- Card lacked standing under 37 C.F.R. § 42.302 (a)—a re- quirement for CBM review.”
Return Mail, Inc v. United States (Fed. Cl. 2014). “§ 1498 , the institution of an Inter Partes review trial based on a related Court of Federal Claims case is cited as follows: “See BAE Sys.”
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