Payment Instrument Virtualisation Patent

In this case study, we look at using the International Preliminary Examination process to obtain a clear written opinion during the PCT stage for technology relating to payment instrument virtualisation.
Payment Instrument Technology Patent

Payment Instrument Technology Patent

Using the International Preliminary Examination process to obtain a clear written opinion

The patent application of this case study relates to commercially valuable technology allowing for the virtualisation of NFC-based payment instruments. The patent application for the present case study can be viewed publicly here.

Using the International Preliminary Examination process to obtain a clear written opinion

Here is flow diagram showing the process of using international preliminary examination, which will be discussed in further detail below:

Payment virtualisation International Preliminary Examination case study

Payment virtualisation International Preliminary Examination case study

Filing a PCT patent application without International-type Search

In this case study, the PCT patent application was filed in the first instance without having first performed the International-type search. For more information about the advantages of utilising the International-type search, please refer to this page about taking advantage of the International-type search.

As such, in the present case, the PCT patent application was filed in the first instance. Sometime later, the International examiner performed a search of the prior art. The examiner believed that certain aspects of the technology would not new in light of the prior art and therefore issued an adverse written opinion.

Note that receiving an adverse written opinion in the first instance is not undesirable. The reason for this is that when choosing the scope of the claims of the patent application, one generally tries to go as broad as reasonable with a view to later restricting the scope just enough to distinguish the claimed invention from the examiners cited reference. In this way, the patent applicant is able to obtain the broadest possible scope of protection. If, conversely, the patent applicant were to receive a clear written opinion in the first instance, it could be indicative that the claimed invention was drafted to narrowly, which could adversely affect the enforceability or commercial prospects of the subsequently granted patent.

Receiving an adverse written opinion in the first instance is not undesirable because it means that the scope of the claims was not unduly limited in the first instance.

As such, upon receipt of the adverse written opinion from the examiner, I was able to see a clear difference between the present invention and that of the prior art references. Specifically, whereas the present invention operated at the issuer level, all of the prior art references operated at the acquirer level. As such, the prior art arrangements disadvantageously required modification of the POS terminals.

Now, at this point the patent applicant could simply have done nothing and continued with the patent application into each country down the track. The disadvantage of doing so however, is that each examiner in each country would generally follow the opinion and each issue similar adverse examination report. In this regard, the patent applicant would be arguing with examiners on multiple fronts.

As such, it was decided to obtain a clear written opinion during the international patent application stage such that, down the track, the patent should be granted straight away without problem.

Utilising the International Preliminary Examination process

During the PCT patent application stage, there is an optional examination stage during which the patent applicant can make claim amendments and put forward persuasive arguments to the examiner in order to obtain a clear written opinion. The process is initiated by filing a demand for International Preliminary Examination. The demand is accompanied by claim amendments if necessary and arguments.

International Preliminary Examination is used to make claim amendments and put forward persuasive arguments to the examiner in order to obtain a clear written opinion

In the present case, the following claim amendment were made to slightly narrow the scope of the claimed invention to operating at the issuer level:
Claim Amendments

And the following arguments were put, as shown by the following extract:
Payment Virtualisation Arguments

In the present case, the above claim amendments and arguments achieved a clear written opinion. As such, the patent applicant is now on the advantageous position of having a clear written opinion during the international stage which is encouraging to investors and discouraging to competitors.

Also, in each national phase country down the track, each examiner will probably be persuaded by the written opinion and grant patent rights right away.