According to many, we are currently in a digital revolution that is changing the way we all do business. This is certainly the case for the Financial Technology (FinTech) sector, which has seen significant growth in the last decade as set out in recent articles from Bloomberg Businessweek and Envision IP.
The articles note that big US banks are applying for more patents than ever before and, in particular, Bloomberg states that banks and payments companies were awarded 36% more granted US patents in the last three-year period than in the prior three-year period. However, statistics quoted by Envision IP indicate that the number of finance and payments patents being granted, both to financial services companies and technology companies, peaked in 2013 and have since declined somewhat.
It is worth bearing in mind that the Alice Corporation Pty. Ltd. v. CLS Bank International et al. (No. 13-298) (‘Alice v CLS’) decision of the Supreme Court of the United States was published in June 2014 and this will have had an appreciable impact that, at least in part, explains the recent reduction in the number US patents being granted in this sector. The Alice v CLS decision has been discussed in further detail in our previous posts.
It should also be borne in mind that patents are not granted or rejected in a day (despite what the first series of Suits may have you believe!) as anyone who has had some experience with the patent process will know. Therefore, while the number of patents granted to a company evidences the continued interest in seeking patents, the number of applications filed is typically a more accurate indication of the company’s current appetite for patents.
However, it is not a simple task to accurately determine how many applications a given company or sector is currently filing. First, applications are not usually published until approximately 18 months from the filing (or priority) date of the application and so the publically available figures are always out of date to an extent. Secondly, a subset of the applications in the finance and payments sector may lie on the borders of European style patentability with regard to computer-implemented inventions and business methods; therefore patents directed to this subset have historically often only been applied for in the US. This enables the applicant to file a request for non-publication with the USPTO such that the application is not published until it is granted, which further muddies the statistical waters in this field.
While the fallout of the Alice v CLS decision has definitely made it harder to get a US patent in the finance and payments field for the time being, no one can say for certain if this will still be the case in a year or so and such applications filed now may experience a more positive reception at the USPTO by the time substantive examination is under way.
The Alice v CLS decision certainly does not appear to have deterred MasterCard, who Bloomberg notes “applied for 500 last year, 10 times the number in 2010, according to Colm Dobbyn, head of the company’s patent program“.
Indeed, continuing to file and pursue FinTech patents in the US and other jurisdictions is key for banks and other companies to remain competitive in this currently uncertain environment. We believe there is a good chance that the USPTO will soften its current stance and, as they say, you’ve got to be in it to win it.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.