In early 2019, the United States Patent and Trademark Office released new guidelines that may help increase the success rate for patenting Fintech inventions and simplify issues in patenting Fintech inventions.  The guidelines express the USPTO’s views on how to determine whether subject matter is eligible to be patented.  

 Prior to the guidelines, which became immediately effective, Fintech inventions risked being rejected from patenting for being directed to an “abstract idea” under a 2014 Supreme Court decision - Alice Corp. v. CLS Bank Int’l.  And, predicting whether an invention would face such a risk and whether the risk could likely be overcome was difficult because different examiners would approach the issue differently.  The guidelines now require that an invention be directed to one of three groups of abstract ideas to be deemed ineligible for patenting:  (1) mathematical expressions (e.g., a mathematical formula), (2) organizing humans or human actions, and (3) mental processes performed in the mind of a human.  If the invention is not directed to subject matter of one of those groups, then the invention should be deemed eligible for patenting.  (The invention must also be new, nonobvious, and sufficiently described.)   Even if an invention relates to subject matter in these groups, the guidelines state that the invention should be deemed eligible for patenting if the invention is integrated into a practical application of the abstract idea.     

The effect of the guidelines should make determining whether Fintech inventions are eligible for patenting more predictable and should result in fewer hurdles faced by Applicants in seeking patent protection for Fintech inventions.  Fintech companies that have been discouraged from patenting due to patent eligibility issues can now reconsider seeking patent protection for at least some Fintech inventions.

 The guidelines, which also include guidance on sufficiently describing an invention, can be found at the following link:  https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf