Expert Advice Saves Present And Future Intellectual Property

A leading credit card company engaged EverEdge to advise on a dispute with a competitive partner, and to review its inventive processes ensuring intellectual property protection drives all future innovation.

The client is a specialist in pre-paid credit cards, providing solutions to consumers and businesses. Starting life in one product area, a pre-paid card for students and immigrants to the UK, this innovative company soon realised it had unique solutions applicable to other areas.

Over the next few years, the client introduced a multiple currency card that incorporated foreign currency exchange (FX) functionality. This converted cash payments, or withdrawals into the best global FX rates available, within the standard time required for a transaction. This was a ground breaking technical solution and enabled the client to build distribution networks and grow market share.

The client had also developed a unique card layering technology, which enabled users to connect multiple accounts to the one card and direct payments to the provider of their choice irrespective of card.

The client was growing at 100% p.a. in sales terms and had a number of issues worrying the management team.  

The first was potential infringement by a commercial partner. The client had agreed to test the card (V1.0) on a small number of the partner’s customers. The trial was successful and the number requested grew. The partner then challenged the intellectual property rights of the client.

The second issue was the lack of a structured intellectual property portfolio and awareness of freedom to operate. Lastly, new intellectual property was being developed (V2.0) but not protected.

The client’s senior management team were heavily involved in sales so their time to focus on these issues was limited. Accordingly, we created a programmeme that did not require a lot of C-level time and implemented it on a very flexible basis. The client was developing a new iteration of their product, V2.0, and wanted to ensure intellectual property protection.

We worked closely with the technical team to understand the inventive process. We analysed what steps they had taken, which were unique and why they were unique. 

The findings, combined with an industry wide search examining who was doing what, revealed that while a lot of what the client was doing was industry standard, there were a number of areas that were unique and could be protected by a combination of trade secrets and patents.

In the first instance, EverEdgeIP assisted the client to resolve the dispute with the competitive partner and successfully negotiated the sale of V1.0 to them. While the client decided to sell their original product, they did not want V2.0 to be in the same position. EverEdge has identified the areas in the new version, which are unique and recommended the best ways to ensure their protection.

The client is currently undertaking a private equity raise. Our work has enabled the client to demonstrate to prospective investors their protectable intellectual property and obvious value proposition. We are also in discussions with the client to broker the sale of their company to a global credit card company.