Escaping PTAB Review Through Strategic Disclaimer in CBM Proceedings -
A patent is only eligible for covered business method (CBM) review if it: (1) claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service (the “financial prong”); and (2) does not claim a technological invention (the “technological invention prong”). Only one claim of a patent must satisfy this requirement in order for the entire patent to be CBM-eligible. This raises the question of whether a patent owner can avoid CBM review by canceling or “disclaiming” certain claims, leaving the remaining claims ineligible for CBM review.
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