Method of converting a payment account is not an invention for the purposes of patent protection

Article by Tom Griffin, Trainee Solicitor.

On 8 January 2024, the UK Intellectual Property Office decided that patent application GB2213917.4 (the “Application”), which was filed by Apple Inc. (the “Applicant”) on 23 September 2022, is excluded from being granted under section 1(2)(c) Patents Act 1977 (the “Act”).

The invention which was the subject of the Application concerned the use of payment accounts such as Apple Pay and, in particular, restricted payment accounts. An example of this is where a parent creates a restricted ‘sub-account’ for a child. The Application related to the monitoring of the restricted sub-account by the ‘primary’ account so that when the child, for example, reaches 18, its restricted sub-account can then be converted to a new independent primary account and ties between the parent and child’s accounts are then broken.

Section 1(2) of the Act defines categories of things which are not to be regarded as inventions. Relevant in this matter was sub-section (c): a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer.

In determining whether an invention is excluded under section 1(2) of the Act, the following four-step test must be followed:

• properly construe the claims (that is to say, the precise statements included in a patent application that define the boundaries of the invention);
• identify the actual or alleged contribution;
• ask whether it falls solely within the excluded subject-matter; and
• check whether the actual or alleged contribution is actually technical in nature.

As to (2), in identifying and assessing the “contribution”, it is useful to consider what the inventor has added to human knowledge – what problem is said to be solved?

The examiner assessed the contribution to lie in converting a restricted payment account to an unrestricted account based on the age of a user. The Applicant’s view of the contribution was similar, however, it also included more explicitly the purported advantages of the invention, namely the conversion being secure and efficient in respect of personal data.

It was decided that the contribution falls solely within excluded subject-matter, specifically a method for doing business and a program for a computer, and is not technical in nature. The fact that the conversion process takes place on an electronic device based on metadata stored on the device does not make the business method technical.

Comment

This decision exemplifies that the mere use of a computer to implement a business method does not make a computer-implemented business model technical. It also demonstrates the role in the drafting process of ascertaining the alleged contribution of an invention.

If you have any queries relating to patent applications, oppositions or infringements, please contact a member of our intellectual property department on 0161 832 3434.