Page 14 - Key Insights for Obtaining FinTech Patents Brochure

Obtaining FinTech patents requires a thorough understanding of the rules regarding patent- eligibility, careful analysis on the front end to pursue an invention in a way that is likely to pass muster, then carefully drafting the patent application and claims to meet the two-part test.
therefore operates in a non-conventional and non-generic way to ensure that the customer’s identity is verified in a secure manner. Thus, sample claims 2 and 3 would be eligible at Step 2B.
If Examples 21 and 35 were analyzed under the current guidance, we think it possible that the claims indicated as being eligible at Step 2B may also be found eligible at Step 2A-Prong 2. This is because the elements found to provide an inventive concept in each case could also be considered to integrate the abstract ideas into a practical application by, for example, providing a technical solution to a technical problem.
3. If “fin”-related, try to characterize the invention in a way that is not directed to an abstract idea (but this is often hard)
a. focus on any technical aspects of the invention that are necessary to enable the invention (e.g., a new financial service or business mode, such as: i) any improvement to the functioning of a computer or other technology needed to implement the invention; ii) using a particular machine or manufacture that is integral to implementing the invention; or iii) applying or using the abstract idea in some meaningful way;
4. Ensure that the claim as a whole amounts to “significantly more” than the judicial exception itself;
5. Plan in advance your arguments for responding to a rejection for lack of patent-eligible subject matter. Identify the examples, most analogous to the invention, where patent eligible subject matter was found. Also consider examples, most analogous to the invention, where the invention was deemed patent-ineligible subject.
6. Draft the specification and claims to be most similar to the structure of the favorable examples and to distinguish over the unfavorable ones.
7. Include in the specification a discussion of underlying technical problems the invention is designed to address, and how the invention provides a technical solution. Seek to characterize improvements to systems in terms of efficiency or speed.
8.Use dependent claims to provide a layered approach of additional technical implementations or features (e.g., improvements to a computer) that can be used to argue that, even if a broader independent claim could be considered abstract, the dependent claims recite: i) the abstract idea integrated into a practical application under Step 2A, Prong Two; or ii) that the claim amounts to an inventive concept or is “significantly more” than the abstract idea under Step 2B.
9. Where feasible, try to draft the title, field of the invention and preamble of claims to avoid having the invention classified as a business method. Examiners in these art units have notoriously low allowance rates. Doing this requires an understanding of how patent applications are assigned to different Art Units in the Patent Office.
10.If you receive a rejection for patent-ineligibility, arrange an Examiner interview to discuss it. Many Examiners are helpful and will suggest modifications to the wording of the claims to overcome the rejection.
Strategy Tips
Obtaining FinTech patents requires a thorough understanding of the rules regarding patent-eligibility, careful analysis on the front end to pursue an invention in a way that is likely to pass muster, then carefully drafting the patent application and claims to meet the two-part test. Here are some specific strategy tips for doing so, assuming you have already qualified the invention as distinguishable over the prior art and fall within in one of the four statutory categories of invention (processes, machines, manufactures and compositions of matter).
1.Assess the novel aspects of the invention to determine if they are more “fin”-related or “tech”- related.
2. If “tech”-related:
a.articulate a technical solution to a technical problem, if feasible;
b.try to draft claims that are not directed to an abstract idea. i.e., try to avoid claiming mathematical concepts, methods of organizing human activity or mental processes; ensure that the claim recites more that just using a computer;
Key Insights for Obtaining FinTech Patents
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