Getting your IP strategy right: when filing a patent application is not the answer

In a recent UK-IPO hearing, Mr James Powell had his self-drafted patent application refused on the grounds that his invention related to a mathematical method and business method. It was also found that the application lacked sufficient detail and did not disclose the invention clearly and completely enough to be performed by a person skilled in the art.

The invention in question related to a ‘fraud proof’ payment card, such as a debit or credit card. The number of the payment card was related to the cardholder’s postcode and house number. The card was only to be used to pay utility bills at the property in which the card number was based.

The UK-IPO argued that it was not explained how the card number was related to the house number and post code. Without providing any details of how the card number was derived from the postcode and house number, any and every relationship would fall within the scope of the claims. The UK-IPO decided that, in the absence of a single illustrative example of a suitable relationship, such a broad claim was not justified. In relation to this point, it was stated that deriving a number from a series of letters and numbers was merely a mathematical method and so would be excluded anyway.

The UK-IPO further stated that there was no description of how the payment card was limited to only paying utility bills, and not capable of making any other payment. In relation to this feature, it was pointed out that restricting the use of a payment card to utility bill payments was a method of doing business and so even if a description had been provided, this feature would have been excluded.

Finally, the claim in question stated that the payment card was “100% fraud proof” but there was no description as to how this was achieved.

This would have been a challenging patent application to prosecute, even if the invention had been fully described. The right strategy for this invention may have been to avoid filing a patent application at all, at least in the UK. This demonstrates the value in seeking expert advice at an early stage, especially for inventions that might relate to excluded matter.

See here for more information on patenting computer implemented inventions.

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