Intellectual Property for Financial Institutions

As technology becomes increasingly critical to daily business - for completing transactions, managing communications, keeping accurate records, ensuring customer privacy and a host of other issues - financial institutions are realizing the importance of their intellectual property. Pepper Hamilton LLP is experienced at helping banks, credit card companies and other financial institutions protect and maximize the value of their business methods, trade secrets, trademarks, copyrights and other intellectual property.

Patents

The number of patent applications from financial institutions increased 15-fold from 1995 to 2002, according to the U.S. Patent and Trademark Office. That reflects not only the growing importance of technology and new business processes to the industry, but also the need for financial institutions to fully protect and exploit the commercial value of their IP assets.

Pepper’s patent-related services include:

preparing, filing and prosecuting applications for patents involving a wide range of technologies, including financial services business methods
negotiating and preparing technology-related agreements, including material transfer, pilot study, sponsored or collaborative research, option, license, supply or asset purchase agreements
conducting interference proceedings before the U.S. Patent and Trademark Office
analyzing patent infringement and validity issues, and preparing right-to-practice, non-infringement and invalidity opinions, where appropriate
conducting intellectual property audits and due diligence analyses in transactional matters.

By patenting their innovations, financial services businesses can open lucrative new revenue streams through licensing and other agreements. Pepper is adept at assisting clients in reviewing their patent portfolios and developing strategies to maximize the value of patentable assets. Frequently, this may involve licensing programs, sale of certain assets, or collaborative agreements with other businesses to develop new or currently underutilized resources.

To be truly effective, patents must be enforced. We are particularly strong in patent litigation. We handle patent litigation for a wide range of corporations and private businesses, from Fortune 100 to venture capital-driven and other growth-oriented companies. Because of our trial experience, we have been designated as lead trial counsel in major patent infringement and trade secret cases.

Trade Secrets

Patents are not always the best way to protect your competitive advantage, in part because they are publicly available. We are experienced in preparing domestic and international trade secret licenses and crafting corporate confidentiality, security and non-competition programs. We enforce these protections in many fields, including computer software design and customer relations management.

Trademarks and Copyrights

Trademarks, trade dress and copyrights are increasingly important in the ever-competitive financial services industry. We counsel clients on obtaining trademarks and copyrights, perform searches and render viability opinions. We file hundreds of applications to register trademarks and copyrights each year, and monitor thousands of domestic and foreign registered trademarks. We also aggressively defend clients’ trademarks and copyrights in litigation and handle cancellation and opposition proceedings before the USPTO and the Trademark Trial and Appeal Board.

Representative Engagements

Intellectual property matters we have handled for financial services clients include:

handling patent drafting and prosecution for a wide range of financial services business methods, including "smart card" and other payment technology, transaction card design, and fraud and illegal financial activity detection technologies, for leading banks and credit card companies
conducting infringement and validity analyses and preparing right-to-practice, non-infringement and invalidity opinions for major banks and other institutions
representing financial institutions in a wide array of technology-related transactions, such as acquiring new technology for credit card processing, online transactions, management of financial data, identification of eligible lenders and other matters. In many of these transactions, we helped assure our clients that their vendors would comply with the privacy requirements of the Gramm-Leach-Bliley Act and other relevant laws.
representing banks and other financial institutions in litigation over trademarks covering bank names and copyrights covering transaction processing software
assisting a premier global financial services company with several IP and contract issues, including: drafting U.S. agreement forms and working with the company’s European leadership to develop a single form to be used throughout the company’s global operations; drafting and negotiating wholesale services arrangements under which the company offered electronic banking services connecting banks around the world with their customers; and negotiating and documenting agreements for the purchase of hardware, software, databases and services. We also assisted the company in developing export licensing programs enabling it to ship large amounts of closely regulated encryption technology (embodied in such things as secure telephones and electronic banking software) around the world.
representing a major U.S. bank in ending - within 36 hours - the framing of much of the bank’s Web site content by Russian cyberpirates
assisting major banks with trademark counseling, prosecution and portfolio management
IP due diligence and agreement preparation in connection with loans by leading banks
litigation over the performance/non-performance of software used widely in the financial services industry
litigation over the theft of trade secrets, solicitation of customers, and enforcement of non-compete agreements by departed employees who join competitors.