• Financial Institutions Intellectual Property Issues Checklist
  • December 4, 2012 | Authors: Kenneth A. Godlewski; Jacob "Jake" A. Lutz; Thomas "Tom" O. Powell
  • Law Firms: Troutman Sanders LLP - Washington Office ; Troutman Sanders LLP - Richmond Office ; Troutman Sanders LLP - Atlanta Office
  • As a community bank or other financial institution, it is important to be aware of the many ways that intellectual property issues can affect your institution. Utilize the following checklist to determine if your institution has addressed potentially troublesome issues, including:

    • Assess potential for patent issues related to the following areas currently the subject of patent litigation against national banks:

    1. Remote deposit capture;
    2. Check imaging archive;
    3. Exchange and clearing functions;
    4. Mobile payments/ATM transactions via Internet;
    5. Encryption and user authentication;
    6. Coupons/loyalty programs/gift cards;
    7. Customized customer offers/unified messaging; and
    8. Electronic check conversion transactions.

    • Focus on proactive design-around to establish non-infringement position if current issues are applicable. Minor changes often result in avoidance of major headaches.

    • Assess patent landscape while implementing Dodd Frank changes to core banking systems and IT, particularly if involved in brokerage, swaps trading, or securities.

    • Focus on intellectual property indemnities and reps/warranties when assessing vendors and providers for core services (particularly as related to Dodd Frank compliance).

    • Develop invention disclosure program from internal R&D to increase revenue, provide value for potential merger, and memorialize prior art or use invaluable for addressing patent assertions.

    • Create uniformity in employment/independent contractor agreements with respect to intellectual property ownership and use.

    • Assess privacy and social media issues in a proactive fashion but have triage capability available.

    • Monitor trademark issues particularly with development of new domains through ICANN.