When should financial services institutions assert business method patents?

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

When should financial services institutions assert business method patents?

In the close-knit financial services industry, where a company’s competitors are also frequently its customers, when should financial services institutions assert business method patents against competitors?

At a lively panel discussion at the 10th Annual Patent for Financial Services Summit last week, speakers talked about some of the complications specifically faced by financial services institutions in relation to enforcing patents.

For example, how would a decision to pursue a patent infringement suit against a customer who is also a competitor impact a company’s revenue streams and reputation?

Panellists agreed that in addition to assessing the strength of the patents, lawyers should consult key personnel in sales and other departments as soon as possible about whether the lawsuit is wise from a business perspective.

Moderator Charles Macedo, a partner of AmsterRothstein & Ebenstein, said counsel should clarify with businesspeople the conditions under which they would be willing to settle or abandon the litigation. If the company decides to proceed with the claim, consultations are advisable as market conditions and the lawsuit’s likelihood of success may change over time.

“You may have this decision come out and your likelihood of winning the case goes from 80/20 to 50/50,” he said. “You may have the CLS v Alice decision come out, then it’s who knows what. Congress may pass a law. All those things can impact what you do.”

The latest instalment in the long-running CLS v Alice case was delivered in May, when the Federal Circuit sitting en banc invalidated Alice’s patents for a computerised trading system which acts as an intermediary between traders. It was the second time that the Court had considered the case, having vacated its previous panel decision to uphold the patent claims. In a 135-page decision, the judges appeared deeply divided over questions such as when, if ever, computer implementation can make an otherwise abstract idea eligible for patent protection.

Patent attorneys have previously voiced concerns that the case makes it difficult to advise clients on the likelihood of success in lawsuits involving business method patents. Alice is now considering whether or not it will appeal to the Supreme Court.

“If the Supreme Court takes that case on what’s patent-eligible subject matter, that affects everyone in this room,” said Macedo.

Some considerations for business people in the midst of a trial may include: Do reasons for action continue to exist? Are you getting what you hoped for? Are there reasons to change strategy? What options exist? Should you seek, or accept an offer, to settle? Have risks changed?

more from across site and SHARED ros bottom lb

More from across our site

With genuine equity at IP firms becoming rarer, securing partnership is harder than ever, but increased transparency is also making climbing the ladder more predictable
Yossi Sivan explains how Israeli judgment is a pro-brand owner departure from the norm and why it sends a strong message that corporate structures are not always a shield
Halim Shehadeh, group CEO of IP firm CWB, says that in the rush to discuss what AI can do, IP firms are overlooking the more important question of whether they are ready
Caitlin Heard, who formally joined the firm from CMS last month, says she is excited by the ‘energy’ of the London office
Ranjna Mehta-Dutt, who moved to Chadha & Chadha after 25 years at Remfry & Sagar, says the firm plans to expand its life sciences practice through targeted recruitment and dedicated teams for bigger clients
The initial contempt of court claim targeted Stobbs and the firm’s client for allegedly interfering with the administration of justice
Acquisition of platform developed by Boehmert & Boehmert lawyer set to create a combined platform for patent drafting and prosecution in Europe
Partner Rob Jacob unveils plans to offer a beginning-to-end trademark service, how to make prosecution profitable, and why IP ‘buy-in’ from the CEO stands the firm in good stead
Attorneys at Di Blasi, Parente & Associados share how the protection of trade secrets strengthens innovation by bringing together legal practice, regulatory developments, and established international references
Jin Ooi, who joins as a partner today, said he is excited to offer a ‘rounded’ IP service as the firm deepens its litigation expertise in the UK and Europe
Gift this article