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Obtaining valuable patents in the FinTech space requires focusing on both the fin and the tech parts of innovation.
As with other rapidly-evolving technologies, the FinTech space is experiencing a frenzy of patent activity. As its name implies, FinTech is part financial innovation (“fin”) relating to new aspects of finance and finance-related business models, and part technological innovation (“tech”) relating to the application of, and enhancements to, technology that enables the fin-related innovations. Unfortunately, this mixing of innovation often results in difficulties in obtaining patent protection under the USPTO’s ever- evolving tests for patent-eligible subject matter. Many patent applications for fin-related innovations are rejected by the USPTO as being an abstract idea or merely a business method implemented on a computer, both of which are deemed to not constitute patent-ineligible subject matter under the current USPTO guidance. Patent applications that focus on providing specific technical solutions to specific technical problems in the FinTech space often avoid these rejections. However, in some cases, patents that are limited to a specific technical solution can be designed around with an alternative technical solution. And often they do not capture the fin part of FinTech innovation.
Obtaining valuable patents in the FinTech space requires focusing on both the fin and the tech parts of innovation. Securing protection for the “fin” aspects of innovation is often more art than science and requires creatively structuring patent application disclosures and carefully crafting claims. Maximizing the scope of legal protection obtained by FinTech patents requires the ability to “thread the needle” to obtain as much protection as possible for the “fin” aspects of these innovations as well as the “tech” aspects. Doing this requires a thorough understanding of how prior FinTech applications have fared in the USPTO and the courts. While each case is unique and must be evaluated on its own facts, understanding and leveraging prior examples of similar types of FinTech inventions that have been found patent-eligible (and crafting around those have not) is useful.
1 https://www.uspto.gov/web/offices/pac/mpep/s1504.html
Compounding the complexity of patenting FinTech, various technologies that are often leveraged by FinTech inventions are subject to separate guidance from the USPTO. For example, many FinTech innovations utilize aspects of artificial intelligence (AI) and machine learning (ML). The USPTO has grappled with, sought industry comments on, and issued reports relating to, AI/ML patents. To the extent that a FinTech innovation leverages AI/ML, it is important to have a thorough understanding of this aspect of patent examination as well. While merely using AI/ML with a FinTech invention is not going to transform a patent- ineligible idea into a patent-eligible one, to the extent that a FinTech invention involves a unique application or implementation of AI/ML, it is important to understand how best to present this aspect of the technology as well to maximize patent protection.
Some FinTech inventions relate to simplifying the user experience with applications (whether web-based or mobile apps). In some cases, user interface (“UI”) features are one aspect of the inventive concept. It is important to understand the various options that exist for protecting these UI-based inventions. In some cases, novel functional aspects of a UI-based invention can be patented (see Example 1 below regarding patentability of an invention for rearranging icons on a graphical user interface). However, design patent protection may also be available for some aspects of UI-based inventions. In this regard, the USPTO has issued Guidelines for Examination of Design Patent Applications For Computer-Generated Icons,1 which make clear that both full screen displays and individual icons can be patent-eligible subject matter in a design patent when they comply with the “article of manufacture” requirement of 35 U.S.C. 171. According to the guidance, if an application claims a computer-generated icon shown on a computer screen, monitor, other display panel, or a portion thereof, the claim complies with the “article of manufacture” requirement. Given the greater scrutiny on the patent-eligibility of FinTech-related utility patents, consideration of design patent protection for certain UI-based inventions can enhance the scope of patent protection available.
The rest of this article further elaborates on the legal requirements for patent-eligibility of FinTech inventions, including USPTO guidance and examples on patent- eligibility of FinTech inventions and tips for developing strategies for obtaining valuable FinTech patents.
Key Insights for Obtaining FinTech Patents
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