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Just read Top 10 (US) Patents for 2014 and spotted one that essentially covers a business process that's only really applicable outside of the US: Bank of America’s the Foreign Currency Solution (U.S. Patent No. 8818868)

Ignoring whether the subject matter is patentable, as it was granted post Alice. I'm wondering if holding a US only patent on a software implemented business method that will only ever be used outside of the US has any merit?

Per my comment to the article:

Correct me if I’m wrong but the only legal tender in the US of A is the USD, so irrespective of where you are in the US (reach of the US patent office), the only currency a device implementing the patented method will ever select, based on location, is the USD. This rather renders all the text relating to a second account / currency / processing unit…… a bit redundant, and I suspect is unlikely to be copied/implemented by a rival.

Essentially the new / novel bit of the patent will only ever come into play outside of the US, and therefore the jurisdiction of any protections offered by a US patent.

Also wondering what the legal position of offloading the account selection logic to a remote / cloud based server, outside the US would be. You could obviously circumvent the US patent, but if the service / code / implementation has never been in the US, and the phone (mobile device) at the time is not in the US, how would the Bank of America enforce an infringement claim against a US rival, offering an equivalent service to their US resident customers, while outside the US?

Oh I'm ignoring the mountain of prior art that would probably invalidate this patent, if ever challenged e.g Mondex

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  • Related: patents.stackexchange.com/questions/12132/…
    – arober11
    Mar 18, 2015 at 13:02
  • I've thought of a couple of scenarios where this patented currency selection technique could be applied & within US jurisdiction, but you wouldn't want it to. The inventive step appears to be the use of the devices GEO location, rather than the established practise (Mastercard Mondex 1996) of selecting based on the currency code a Point-of-Sale terminals (POS) requests payment in. So the process may kick in on US flagged Cruise / Naval ships in the territorial / disputed waters of another nation, with US personnel attempting to purchase items while stationed at US overseas bases & embassies.
    – arober11
    Mar 19, 2015 at 13:13

1 Answer 1

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Such cloud based activities can be an act of infringement under

35 U.S. Code § 271 - Infringement of patent

(g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after—

(1) it is materially changed by subsequent processes; or

(2) it becomes a trivial and nonessential component of another product.

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  • The key phrase is "imports into the United States". If the patent covers a process whose scope is limited to "outside of the Unites States", and even if offered by a US entity, How can the patent ever be infringed?
    – arober11
    Mar 18, 2015 at 7:46
  • The "outcome" is irrelevant, as the patent covers / protects the performing of a specific "business process" that will only ever be executed outside of the US, on equipment physically located outside the US, with a merchant, also located outside the US.
    – arober11
    Mar 18, 2015 at 8:35
  • i think method claimed in US will make 271 g in picture, its immaterial if claim itself say process can be performed outside US, ultimately outcome data of a performed method is in US.
    – Pushpak
    Mar 18, 2015 at 8:48
  • The "outcome" is the purchase of a Latte in a Canadian Starbucks / McD, in Canadian Dollars. There's plenty of prior art for this "outcome", even via NFC ;-) The patent protect a mobile device (phone / smart watch...) determining, with the aid of a remote service, that it's in Canada and so should pick a CAD denominated account.
    – arober11
    Mar 18, 2015 at 9:04

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