Blockchain is the hot new thing in technology. It’s also a relatively new area of intellectual property law, which means we’re all still learning how to evaluate blockchain patent applications and what strategies we can use to get our ideas protected. This article is based on my experience working with a number of fintech companies and IoT companies in protecting their blockchain IP assets.
Here are some things you should consider when filing for blockchain patents, as well as some tips for making sure your application gets through the process without being rejected by the USPTO (or another country’s patent office).
Blockchain is a new, emerging technology that is being used to create digital ledgers and databases. Blockchain has been around since 2009, when it was first introduced as part of the Bitcoin project. It’s a public, distributed database or ledger of transactions—similar to how Google Docs or Microsoft Word work with documents.
With blockchain, each participant in the network creates their own version of transactions and shares them with other participants on a peer-to-peer basis. These copies are compared against each other until they match up: if they don’t match up then there’s something wrong with one of the copies and it can be discarded (or corrected). This process ensures that no individual has sole control over any particular transaction; instead, all participants have access to an identical record that nobody can alter without proof from others on the network.
The result is an open source technology platform for building applications where interactions between users are recorded publicly and permanently in shared databases called blockchains
Blockchain is a distributed ledger technology. A blockchain is a decentralized database that uses peer-to-peer networking to create an append-only ledger of transactions shared among all users on the network. Embedded in each transaction are rules and restrictions that only allow it to be added if certain conditions are met, like being signed with a private key or approved by more than half of the participants on the network.
Blockchain does not use traditional servers or middlemen such as banks or governments, instead relying on cryptographic proof for its validity and security. This means there’s no central authority controlling access or recording activities—everything happens transparently between peers without any one party having special privileges over another (e.g., miners do not control mining rewards).
Blockchain technology has the potential to be used in a wide range of industries and applications. Some examples of novel uses for blockchain include:
- Supply Chain Management: Blockchain can be used to create a tamper-proof and transparent record of transactions throughout the supply chain, which can help to improve efficiency and reduce the risk of fraud.
- Digital Identity: Blockchain can be used to create a secure and decentralized digital identity that allows individuals to control and share their personal information with others.
- Smart Contracts: Blockchain can be used to create smart contracts, which are self-executing contracts with the terms of the agreement between buyer and seller being directly written into lines of code.
- Internet of Things (IoT): Blockchain can be used to create a decentralized network of IoT devices that can securely exchange data and interact with each other without the need for a central authority.
- Digital Currency: Blockchain is the underlying technology for digital currencies such as Bitcoin, Ethereum and many others.
- Gaming and NFTs: Blockchain can be used to create and trade digital assets such as non-fungible tokens (NFTs) which can be used in gaming and other digital experiences.
- Health-care: Blockchain can be used for secure sharing of medical records, tracking of drugs and medical equipment supply chain, and insurance claims.
- Energy: Blockchain can be used to create decentralized energy markets that allow individuals to buy and sell energy directly with each other, without the need for a central authority.
These are just a few examples of how blockchain technology can be used, and many other novel use cases are still being developed and explored.
IP Considerations for Blockchain Startups
Blockchain technology raises a number of intellectual property (IP) issues, including issues related to patenting, trademarking, and copyrighting.
Patenting: Blockchain technology and its various applications, such as smart contracts and decentralized applications, may be eligible for patent protection. However, there is ongoing debate about whether certain aspects of blockchain technology, such as the underlying distributed ledger concept, are too abstract to be patented.
Trademarking: Companies using blockchain technology may seek to trademark their brand names and logos, but there are also challenges in this area. For example, some blockchain platforms are decentralized and have no central authority controlling the use of the brand, making it difficult to enforce trademark rights.
Copyrighting: Blockchain technology can also be used to protect copyrightable works, such as music, videos, and text. However, there are also challenges in this area, such as how to enforce copyright in a decentralized and anonymous environment.
Overall, while blockchain technology has the potential to create new IP opportunities, it also presents new challenges that must be addressed to protect and enforce IP rights.
Blockchain prior art
Prior art is a concept in patent law. It refers to the idea that there may be pre-existing technologies that make your invention obsolete or invalidate it. Prior art commonly arises when you are trying to patent a technology that has been patented in the past, but it can also be found on the internet or even in science books and journals.
Prior art is closely related to anticipation, which means that a patent examiner may find an earlier reference that teaches all of the elements of your invention and therefore would block your attempt at getting a patent on it.
Patents on blockchain are not new: they have been around since 2008 when they were first filed by Bank of America®, MasterCard®, and Wells Fargo® (among many others). But patents on blockchain in particular areas—for example those relating specifically to cryptocurrencies like Bitcoin™—are relatively new because cryptocurrency has only recently become mainstream enough for people in tech finance circles (such as crypto/defi apps) to begin thinking about how best to protect its innovations with intellectual property rights.
Blockchain and 101 patent eligibility Issues
When it comes to applying for and getting a patent, you need to be aware of the rejections that can occur. These include 101, 102 and 103 rejections. A section 101 rejection can be issued if the PTO examiner thinks your claim is so broad as to cover abstract ideas.
When patenting crypto-based technology, one of the biggest challenges lawyers face is its eligibility. Due to the math nature of blockchain systems, they fall within the USPTO’s definition abstract ideas. The claimed invention must also be patent-eligible subject material. This means that the patent claim cannot be directed at a judicial exemption unless the entire claim includes additional limitations significantly exceeding the exception. These are also known as “judicially recognized exceptions” (or simply “exceptions”), which are subject matter that courts have determined to be outside, or an exception to, the four categories of invention. They are limited to abstract ideas and laws of nature, natural phenomena, and products of nature. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 106 USPQ2d 1972, 1979 (2013).
To determine eligibility, the Alice/Mayo 2-part test should be used. While the machine-or-transformation test is an important clue to eligibility, it should not be used as a separate test for eligibility. It should be part of the Alice/Mayo test’s “integration” or “significantly greater” determination. Bilski, 561 U.S. 5, 605, 95 U.S.PQ2d 1001, 1007 (2010). See MPEP SS 2106.04(d) for more information about evaluating whether a claim reciting a judicial exception is integrated into a practical application and MPEP SS 2106.05(b) and MPEP SS 2106.05(c) for more information about how the machine-or-transformation test fits into the Alice/Mayo two-part framework.
Eligibility should not be determined based on whether the claim cites a “useful concrete and tangible result.” State Street Bank 149 F.3d 1368-1374. 47 USPQ2d 1696. Cir. 1998) (quoting in re Alappat 33 F.3d1526, 1544 and 31 USPQ2d1545, 1557 (Fed. Cir. Cir. In re Bilski, 545 F.3d 943, 959-60, 88 USPQ2d 1385, 1394-95 (Fed. Cir. 2008) ( En banc), adjudicated by Bilski, 561 U.S. 5,93, 95 U.S.PQ2d 1001 (2010). TLI Communications LLC v. AV Automotive LLC 823F.3d 607 and 613 (Fed. Cir. Cir. The “special purpose computer” or programmed computer test of in re Alappat. 33 F.3d at 1526. 31 USPQ2d at 1545. (Fed. Cir. 1994 ( i.e.) The argument that an otherwise ineligible software or algorithm could be made patentable by simply adding a generic computer as a claim for the “special reason” of execution was also overthrown by the Supreme Court’s Bilski or Alice Corp. decisions. Eon Corp. IP Holdings LLC against AT&T Mobility LLC 785F.3d 616 and 623 (Fed. Cir. 2015. Cir. Cir. The final factor in determining eligibility is whether the claimed invention is useful. “[U]tility does not test for patent-eligible material.” Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1380, 118 USPQ2d 1541, 1548 (Fed. Cir. 2016).
The U.S. Patent and Trademark Office has been dealing with blockchain-related patent applications. The Patent Trial and Appeal Board has issued a number of decisions over the last year regarding appeals from examiner rejections for blockchain patents under Section 101. Of these, the PTAB has not reversed any rejections made on Section 101 grounds. It does not necessarily mean that there are no blockchain patents being issued. However, it does indicate that particular patent applications will be rejected by the examiners. This uniform affirmation of rejections of blockchain applications is not surprising, given the updated PTO Section 101 guidance that was published in January 2019 and the inconsistent handling of Section 101 by the courts.
For an example, an appeal in the case of Ex parte McCann, No. 2021-003397 (P.T.A.B. March 7, 2022), the PTAB reviewed the claim 1 of the 824 application. It found that it was directed to the abstract idea of “certain methods of organizing human activity as exemplified by the commercial and legal interaction of managing commercial payment transactions by advising one to process payments with an available payment instrument and post the payment to a ledger, without significantly more.” Id. 20. The PTAB explained that the claims were not eligible, even though they include a recital of a cryptographic and blockchain data. The PTAB indicated that the recital of a Blockchain is a generic and conventional blockchain and is essentially an accounting ledger.
The claims don’t give any details about the technological implementation. The claims only mention the idea of using block chains for storage. The PTAB noted that the applicant did not claim to have invented block-chain technology, and the cryptographic data recital is also generic.as being a simple invocation of the concept of cryptography, but does not include any technical application or details. Id. 14-15. The PTAB concluded that the claims did not contain an inventive concept as they are limited to the abstract idea cited. Id. Id., 17-19. The PTAB determined that the claims can be analyzed separately and in an ordered combination to determine if they are “purely conventional” or ordinary. Id. Id., 17-19.
Section 101 scrutiny is not likely to be satisfied with claims that “do it with blockchain technology” take an existing financial practice. Claimants have a better chance of passing Section 101 scrutiny if they demonstrate how their claims will improve the operation and functionality of the computer performance.
Blockchain and 102/103 obviousness rejections
In addition to the 101 rejections, when it comes to applying for and getting a patent, you need to be aware of the 102/103 rejections that can occur. These include:
- 102/103 obviousness rejections (most common for blockchain patents)
- 101 prior art rejections (can apply to blockchain/distributed ledger technology patents)
A 102 rejection requires that a single document contains each and every element of a claim. This is hard to do if you have claimed your invention appropriately because it requires an identical invention in the prior art. However, an obviousness rejection under Section 103 is much more common as the examiner can piece together from two or more documents.
35 U.S. Code § 103 – Conditions for patentability and non-obvious subject matter – states that:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
blockchain patent strategies
Blockchain technology is a rapidly evolving field, and companies and individuals may have different strategies for protecting their blockchain-related innovations through patents. Some strategies include:
- Filing for patents early: Companies that are developing new blockchain-related technologies may want to file for patents as early as possible to secure their rights before others do.
- Filing for broad patents: Companies may want to file for broad patents that cover a wide range of potential uses for their blockchain-related innovations. This can help prevent others from developing similar technologies and can also provide a strong bargaining position for licensing or cross-licensing agreements.
- Filing for defensive patents: Some companies may choose to file for patents not necessarily with the intention of commercializing their technology, but rather to prevent others from doing so.
- Filing for patents in multiple jurisdictions: Blockchain technology is a global phenomenon, and companies may want to file for patents in multiple countries to protect their rights in different jurisdictions.
- Filing for patents in blockchain-specific jurisdictions: Some jurisdictions have specialized in blockchain and crypto-related patenting and it could be beneficial to consider patenting there as well.
- Open-sourcing and licensing: Some companies may choose to open-source their blockchain-related innovations and make them available to the public under a permissive license. This can help to foster innovation and collaboration in the blockchain community, while also allowing the company to retain some control over the technology through licensing agreements.
These are some of the patent strategies that companies may consider when working with blockchain technology, but it’s important to consider the specific circumstances and business goals of each case.
Blockchain Patent Examples
While blockchain is a new, cool programming topic and many companies are filing patents on it, the Patent Office has granted only a handful of patents on blockchain technologies.
When you apply for a patent, you have to explain how your invention works in detail. That way someone else can replicate it if they want. But with blockchain technology this isn’t easy because there are many different ways to implement blockchains (e.g., permissioned vs permissionless). The specific implementation plays such an important role that 101 rejections (too abstract) and 102/103 rejections (too broad) are common when applying for blockchain-related patents. For example, US Patent 11207584 was granted with the following coverage:
1. A device, comprising:
a device body;
an accelerometer coupled to the body;
a camera to capture an image;
a module to manage a chain of custody of a user, where one or more images are taken of a person and immutably supplemented with location, and an identity of the person associated with the image is added as a metadata;
a wireless transceiver; and a processor coupled to the body and associated with a blockchain with a blockchain address for a secured transaction or for identity management.
Another patent 11139081 addresses the application of blockchain to patient data as follows:
1. A method to process blockchain data for a device with a body, an accelerometer coupled to the body to detect acceleration, a sensor, a wireless transceiver, the method comprising:
receiving sensor data relating to medical, health or fitness; coupling sensor data to a blockchain;
using the blockchain to uniquely share patient data while complying with a patient confidentiality requirement:
analyzing or predicting treatment response to a therapeutic intervention;
aggregating genetic information, environmental information, treatment data, and treatment response from a patient population;
applying machine learning to predict disease risks based on the aggregated genetic information, treatment data, and treatment response from a patient population;
and recommending lifestyle modification to the patient based on the aggregated population data to mitigate a disease.
Blockchain patent filing Checklist
Get all your paperwork filed correctly beforehand so there are no mistakes made during the process later down line when things get complicated after many years spent working hard towards getting everything ready up front instead of rushing through things later on only then realizing there were lots more things needed done right away rather than waiting until later which could’ve been avoided had proper planning been done earlier on instead.
A blockchain patent checklist can help companies and individuals ensure that they have taken all necessary steps to protect their blockchain-related innovations through patents. Here are some items that may be included on such a checklist:
- Conduct a prior art search: Before filing a patent application, it is important to conduct a thorough search of existing patents and publications to determine whether the invention is already known or obvious. The first step in patenting any technology is to make sure that it is not obvious and that it is new. To be patentable, an invention must be novel, useful, and non-obvious. If your invention falls into one of these categories, it will likely be considered unpatentable because someone else invented the same thing before you did (i.e., they were probably just not legally able to file for a patent).
- Identify the invention: Clearly identify the specific aspect of the blockchain technology that is being claimed as the invention.
- Draft a clear and concise specification: The patent application should include a detailed description of the invention, including how it is implemented and how it differs from existing technologies.
- Prepare drawings and flowcharts: Drawings and flowcharts can be helpful in illustrating the invention and can make the patent application more understandable to the patent office.
- Identify the best jurisdictions to file: Determine which jurisdictions are the most appropriate for filing a patent application based on the company’s business strategy and the scope of the invention.
- Consider open-sourcing and licensing: Consider open-sourcing the invention and making it available to the public under a permissive license, which can help to foster innovation and collaboration in the blockchain community.
- File the patent application as soon as possible: File the patent application with the appropriate patent office, including all necessary documentation and fees. You don’t want anyone else coming out with a product similar enough or identical enough as yours later down the road just because they knew about your idea first—and got priority by being first on paper too! That is because we are in a first-to-file regime and not the old first-to-invent regime.
- Monitor and maintain the patent: Once the patent is granted, it is important to monitor the patent landscape and take any necessary steps to maintain the patent, such as paying maintenance fees and enforcing the patent against infringers.
It’s important to note that the patent application process can be complex, and it may be beneficial to consult with a patent attorney or agent to help navigate the process and ensure that all necessary steps have been taken.
Blockchain is a very exciting and useful technology that is being used by more and more companies. However, it’s important to remember that patenting your own blockchain-based invention isn’t always easy. It can be a long process with many setbacks along the way, but if you know what you’re doing and have an experienced patent attorney on your side then there’s no reason why your idea shouldn’t become reality!