Financial Institutions Face Fork in Patent Road

“The growth in bank patent portfolios coupled with an apparent rise in patent risk leaves the financial industry at a fork in the road…. It is hard to envision how the industry returns to the status quo ante.”

https://depositphotos.com/11533943/stock-illustration-fork-in-the-road-on.htmlLarge banks have a reputation for being slow to change. However, in the past decade, the financial services industry has seen the wholesale adoption and implementation of new technology as firms realize that consumers and businesses are increasingly demanding a strong digital experience. In 2007, Bank of America was one of the first financial institutions to offer a mobile banking application and since then, the rest of the industry has followed suit. Now, consumers could not go without their banking apps ­– imagine going to the bank to deposit a check.

While banks have understood the value and need to evolve with the times, when it comes to protecting inventions, banks have been late to the game. From 2007 to 2020 the number of utility patents granted by the U.S. Patent and Trademark Office (USPTO) more than doubled, but bank patent holdings did not increase nearly as quickly. An analysis from Cipher shows that in 2017, IBM alone owned more financial related patents than all banks put together. That said, recent data shows that banks are catching on. Bloomberg News highlighted in 2016 that “banks and payment companies were awarded 1,192 patents over the past three years, 36% more than the prior three-year period.” This trend has continued, as Bank of America expands its patent portfolio faster than ever, Capital One has massively grown its own stockpile of patent assets in the last few years, and other banks are also expanding or creating patent programs to focus on portfolio growth. There are more and more banks with significant patent portfolios, and logic suggests that at some point the resources invested in this activity will need to show a return.

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Business Method Bust

The growth in bank patent portfolios comes at a time of overall increasing patent risk. Historically, patent litigation activity in the financial services sector was largely initiated by non-practicing entities against banks. This trend was a major reason for the inclusion of the covered business method review program in the 2012 America Invents Act. But that program recently expired, and Bloomberg News found a threefold increase in lawsuits against financial institutions following its expiration.

In parallel, the last few years have seen the first substantial competitor-against-competitor patent litigation campaign, with USAA starting to aggressively assert its mobile remote deposit capture (mRDC) patent portfolio. USAA sued Wells Fargo first and, after two jury verdicts awarded USAA a total of over $300 million, that dispute settled earlier this year. USAA has now also sued PNC, and it appears inevitable that the entire industry will be dealing with mRDC patent risk in the future.

Increasingly in the past few years, banks have turned their attention to artificial intelligence, machine learning and blockchain patents, with a record 541 blockchain applications submitted in 2019. However, these emerging technology patents are also in the purview of large technology firms with names like IBM, Intel, and Accenture leading the charge. It’s worth noting that the decentralized nature of blockchain puts legacy financial intuitions in a unique position given the need to avoid losing market share to emerging DeFi companies and having to adapt to the challenges posed by larger technology companies looking to branch into the finance space. The rise of technology companies and emerging companies should put banks on notice to evaluate the strength of their patent portfolio because it these companies will be more likely to leverage patents for business purposes than the banks are accustomed to.

The growth in bank patent portfolios coupled with an apparent rise in patent risk leaves the financial industry at a fork in the road. Are these events harbingers of things to come? It is hard to envision how the industry returns to the status quo ante.

Possible Paths

So, how will the industry evolve? One possible path leads to a defensive patent alliance where legacy banks come together to promote knowledge transfer and pool resources. The alliance helps the banks stay out of the courts, encourage cross-licensing agreements, and keep outsiders at bay. While patent alliances are not uncommon, the banking industry is a heavily scrutinized industry where regulators are quick to cry foul if any practice has an anti-competitive effect or stifles innovation. However, patent rights are anti-competitive in a way that is expressly endorsed by the federal government. Additionally, with regulators wrapped up investigating cryptocurrency fraud and decentralized finance concerns, an alliance of legacy regulated institutions may pitch systemic firmness.

Another path leads to more aggressive patent enforcement, and the USAA campaign may just be the canary in this coal mine. Banking has been largely a copycat industry, but could we now start to see banks using patents to enforce differentiation in all facets of their operations? Banks are currently facing a challenging environment of low interest rates and poor loan growth. The banks that find good solutions may conclude that an assertive IP strategy is a good way to preserve or even increase market share and profit margins in the face of negative economic indicators.

Come Out Ahead

What does this all mean? No one can predict the future, but risks can be hedged. The banks that will be best positioned in the future are going to be those with the optionality provided by strong patent portfolios. After all, whether the legacy banks collaborate or fight, those with the patents will come out ahead. The question is, what happens to everyone else?

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The Author

Robert Botkin

Robert Botkin is an associate with Womble Bond Dickinson. He has experience drafting, reviewing and negotiating master agreements, statements of work, non-disclosure agreements, amendments, and other legal agreements and documents relating to intellectual property, market data, information technology, cloud computing and other complex commercial transactions. His transactional experience allows him to provide business-focused and time sensitive solutions, while his regulatory experience allows him to tailor his advice as needed.

Robert Botkin

David Easwaran is of counsel with Womble Bond Dickinson. He concentrates his practice on software patent matters. He has worked with companies of all types, and with innovation at all levels of the software stack. He routinely investigates the patent risks and opportunities presented by the data science and AI/ML advances that are driving innovation today. Dave brings a particularly wide range of experience in the financial services sector, having previously worked as a patent examiner focused on financial services innovation and as an in-house IP counsel in the industry.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments. Join the discussion.

  1. Mark Nowotarski October 28, 2021 9:04 am

    Great article. I have found the USAA versus Wells Fargo case quite an inspiration on how to effectively enforce business method patents. USAA invented remote deposit of checks using cell phones back on 2005 (pre i-phone). The suite of patents they enforced against Wells Fargo survived a full, heads-on 101 challenge. This was largely due to the fact that USAA claimed a very specific, but practical process (e.g., “[give] an instruction to assist the user in placing the digital camera at a proper distance away from the check…”) They didn’t try to claim the overall concept (e.g., “deposit a check using a cell phone”).

    This is an important lesson for any inventor. Claim the specific, but practical process you come up with. Don’t try to patent the overall concept. Patents on specific, but practical processes have the best chance of surviving in court. Patents on concepts do not.

  2. Curious October 28, 2021 1:59 pm

    Patents involving banks and financial services? Personally, I’ve seen them. I’ve prosecuted them. I’ve even gotten some allowed.

    However, will any of those patents ever survive a 101 challenge at the Federal Circuit? My answer is very unlikely. Unless the claims are completely buried with technical limitations (at which point, the claim is unlikely to be infringed) — which may not save them anyway — the Federal Circuit is almost assuredly going to cite Bilski and Alice to send those patents to a watery grave.

    Do I think innovations in the financial area should receive patent protection? Yes. However, I’m not ignorant of reality, and reality says that getting a financial-related patent out of USPTO is almost impossible these days, and I would expect that the likelihood of survival is even less at the Federal Circuit.

    Please don’t shoot the messenger …

  3. Anon October 28, 2021 2:16 pm

    Mr. Nowotarski,

    Interestingly, I cannot agree with your view – per se.

    As most all may realize, claim drafting occurs across a spectrum (often called the Ladders of Abstraction).

    With such a spectrum there is little harm in having some claims be broad. There is every harm in aiming TOO narrow to begin with. Having claims hew to be “specific” may well end up be aimed at picture claims only too easily designed around.

    You may have not intended such to be the message of your post (and I am not saying that such would be a proper takeaway), but I am only too familiar with those in the blogosphere that WOULD employ that takeaway and errantly advocate for NO use of the Ladders of Abstraction.

    Not understanding this — from a patent attorney’s knowledgeable perspective — would be a disservice to general readers.

  4. Mark Nowotarski October 28, 2021 5:01 pm

    Anon @3: In general I agree with what you are saying, except for business methods. As curious @2 has pointed out, business method patents have suffered greatly after Alice. The USPTO is now granting them again, but the courts are shooting them down. The patents enforced by USAA are the only solidly business methods patents I’ve seen in the past 5 years that have survived a serious 101 challenge in court. The patents do have a ladder of abstraction in the claims, but their foundation is a very specific practical embodiment.

  5. Pro Say October 28, 2021 5:24 pm

    Had the same thought Anon @3.

    Draft broad . . . draft narrow . . . and everywhere in between (and get over a handful (or more) excess claims fees. They won’t be “excess” should you ever need them).

    Including because one wants to be ready for whatever the future of eligibility may hold (yet another reason to always have at least one con — ‘specially for those (potentially — for who knows the future?) inventions of great importance.

  6. MaxDrei October 30, 2021 5:56 am

    That old maxim about making sure you always have “something to trade” is more or less universal, isn’t it? And if any sector has that attitude ingrained, it surely must be the financial sector. So, my guess is that in banking and financial services we shall see the emergence of SEP, FRAND, anti-anti-suit injunctions and all the burgeoning infrastructure of patents in the telecoms space, more or less inevitably.

    Just the other day we saw a chart of patent activity in 5G. Correct me if I saw it wrong, but was it not the case that patent holders of Chinese nationality are increasingly dominant in that sector.

    But the world of finance is not comparable, right?

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