Insurance App with a Technical Twist: Excluded Subject Matter and Claim Strategy
You have filed a Malaysian patent application for 'RiskScore', an insurance app. The user enters age, vehicle model and postcode into a mobile app; a server applies a published actuarial formula to calculate a premium; if the premium exceeds a threshold, the app sends a push notification and displays a red, amber or green risk meter. The specification states that the app 'uses caching to reduce server load', but caching is described only as conventional and no cache size, eviction rule or network measurement is given. Claim 1 is a computer-implemented method of assessing insurance risk by receiving data, calculating a score using a mathematical model, and displaying a colour-coded indicator. Claim 2 is a mobile device comprising a processor and the app. Claim 3 is a method of offering a discount to low-risk customers. The examiner has objected that the claims are excluded subject matter. The client says the app is technical because it runs on a phone and reduces server load.
1. Assess each claim under Malaysian excluded subject matter and explain whether any technical effect saves it.
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Malaysian law excludes, among other things, discoveries, scientific theories, mathematical methods, schemes, rules or methods for doing business, computer programs per se, and presentations of information. The key question is not whether a computer is mentioned, but whether the claimed subject matter provides a technical solution to a technical problem beyond normal computer implementation.
Claim 1 is primarily an actuarial/business method and a presentation of information. The steps of receiving data, applying a published formula and displaying a colour-coded risk meter are mental or mathematical steps implemented on a generic computer. The colour coding is presentation of information. The caching reference does not help because it is described as conventional and no technical rule is claimed. Claim 1 is likely excluded.
Claim 2 is a device claim, but a device claim does not escape the exclusion if the device is merely a carrier for a computer program and the contribution is the program as such. The processor and app are generic. Unless the claim requires a specific hardware interaction, memory architecture or network control that produces a technical effect, claim 2 is likely excluded.
Claim 3 is a method of offering a discount. That is a business method and possibly a method of doing business in a commercial sense. It is likely excluded. The mere fact that the app runs on a phone and may reduce server load is not enough unless the reduction is caused by a specific technical feature recited in the claim. On the current disclosure, the technical effect is asserted but not technically implemented.
2. Propose a revised claim strategy with the best chance of grant, and identify any missing support.
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The best strategy is to move away from the insurance decision itself and claim a specific technical mechanism in the mobile device or server. For example, claim a method of managing risk-score updates in a mobile device comprising: storing risk-score records in a cache; applying a defined eviction rule, such as evicting records not updated within 15 minutes; batching network requests when the cache reaches a defined threshold; and updating the display only when a server response is received. The claim should include a measurable technical effect, such as reducing the number of network requests for a given number of user sessions, and the description should explain how that effect is achieved.
A second independent claim could be directed to a mobile device with a memory controller configured to perform that cache management, and a dependent claim could define the specific cache size and eviction policy. The colour-coded meter should be removed from the independent claim because it is presentation of information; it can be a dependent feature if it interacts with the technical process.
The missing support is significant. The current specification says only that caching is conventional. It does not disclose the cache size, eviction rule, batching threshold or any measurement. If the application is already filed, these details cannot be added without added matter. The client may need to consider a new application with a properly described technical embodiment, but the first filing may already be prior art if it has been published. If the application is not yet published, a carefully drafted new application may be possible, but priority for the added technical features would be lost. The client should be advised of that trade-off before any refiling.
3. Advise on non-patent protection for the formula, the user interface and the code, and any interface with industrial design or trade secret law.
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The actuarial formula and the business rules are better kept as trade secrets than disclosed in a patent. Trade secret protection does not require registration, but it depends on confidentiality measures: restricted access, employee confidentiality clauses, vendor agreements and records of disclosures. If the formula is published in a patent specification, secrecy is lost. The client should decide whether the commercial value lies in the formula or in a technical implementation.
The source code is protected by copyright automatically, but copyright protects the expression, not the underlying idea or function. The client should keep version records and copyright notices. The code can also contain trade secrets, such as weighting tables, and those should be separated from publicly distributed code where possible.
The user interface may be protectable as an industrial design if it is applied to an article, is new and appeals to the eye, and is not solely dictated by function. A colour-coded risk meter may face difficulties if it is functional or a mere presentation of information, so a design application should be assessed separately. Industrial design protection is short-term compared with a patent and does not protect the underlying method.
The practical recommendation is a mixed strategy: trade secret for the formula and data, copyright for the code, industrial design for any protectable screen appearance, and a patent only for a genuinely technical cache or network-control mechanism. The patent claims should not disclose more of the formula than is necessary.