IP and the Banking Industry: If You Can’t Change It, Use It:
How Banks Can Take Advantage of the Patent System

By John Cronin, Founder and Chairman, ipCapital Group

In 1997, a small Texas company called DataTreasury invented and patented a novel technology to electronically capture and store checks. More than 10 years later, after post-September 11th laws were instituted requiring banks to be less reliant on paper checks being transported by aircraft, DataTreasury found that its patent was being used by a long list of major American banks. Most of the banks were not paying any licensing fees. DataTreasury filed a flurry of patent infringement lawsuits, prompting the banks to lobby the United States Congress to introduce an amendment that would allow financial institutions to infringe on the patent “in the best interest of American consumers.” That language is included in the Patent Reform Act, a bill that is currently under review in Congress.

Why was the banking industry so unprepared to deal with a single, threatening patent that it had to turn to a fickle and slow-moving Congress for help – help that may never arrive?

ipCapital Group has evaluated the dangers facing the banking industry (in comparative terms to other industries) in its understanding of intellectual property issues and protection strategies. We have found what is needed is for the banks to use the patent system to their advantage by:

• Conducting “patent due diligence” of existing inventions to avoid using unlicensed technologies and opening the door to expensive infringement lawsuits

  The banking industry should add IP (Intellectual Property) Due Diligence to their innovation practices to (a) find potential problem patents early, (b) find potential patents to acquire, (c) to understand competitors IP strategies as well as (d) to understand the strength of problematic patents and to use our systematic invent-around service to ensure their new innovations are free of the problematic areas.

• Promoting internal innovation

  By using strategic Innovation backed by IP, by adding Invention on Demand to its discovery processes, banks can add IP to their new innovations.

• Protecting new technologies and services from competitors

  By using our IP Landscape and IP Analytics, the banking industry can view where other entities (be it major competitors or individuals) are patenting and thus know not only what to protect but how to best protect it. For instance, a strategic IP Publishing program can come close to eliminating troublesome future surprise patents from others.

• Using patents and licensing to gain a premiere position in the market

By using their IP in a industry adoption way, banks can develop effective and strategic IP Licensing programs. This begins with understanding which are the banks strong patents and what their value is (IP Valuation), then moves to an IP Licensing Strategy and IP Licensing team. ipCapital Group has a premiere licensing group to assist in measuring & understanding patent strengths, to further strengthen the existing portfolio. We can help in developing a licensing strategy as well as in licensing the technology and IP. We also offer customized training to help your company to engage in IP licensing.

We at ipCapital, would like to assist you in develop a strategy for using IP effectively in your business and support you with our expert staff and methodologies to train and develop your team to best-in-class processes to deal with this new world of banking IP. To obtain more information or discuss your unique challenges please contact us.