Page 18 - How to Successfully Obtain Blockchain Patents Brochure

5. Ensure that the claim as a whole amounts to “significantly more” than the judicial exception itself;
6. Plan in advance your arguments for responding to a rejection for lack of patent-eligible subject matter. Identify the examples, most analogous to the invention, where patent eligible subject matter was found. Also consider examples, most analogous to the invention, where the invention was deemed patent-ineligible subject.
7. Draft the specification and claims to be most similar to the structure of the favorable examples and to distinguish over the unfavorable ones.
8. Include in the specification a discussion of underlying technical problems the invention is designed to address, and how the invention provides a technical solution. Seek to characterize improvements to systems in terms of efficiency or speed.
9. Use dependent claims to provide a layered approach of additional technical implementations or features (e.g., improvements to a computer) that can be used to argue that, even if a broader independent claim could be considered abstract, the dependent claims recite: i) the abstract idea integrated into a practical application under Step 2A, Prong Two; or ii) that the claim amounts to an inventive concept or is “significantly more” than the abstract idea under Step 2B.
10. Where feasible, try to draft the title, field of the invention and preamble of claims to avoid having the invention classified as a business method. Examiners in these art units have notoriously low allowance rates. Doing this requires an understanding of how patent applications are assigned to different Art Units in the Patent Office.
11.If you receive a rejection for patent-ineligibility, arrange an Examiner interview to discuss it. Many Examiners are helpful and will suggest modifications to the wording of the claims to overcome the rejection.
How to Successfully Obtain Blockchain Patents
www.sheppardmullin.com | 18
Conclusion
Successfully obtaining blockchain patents, and more importantly, ones with meaningful claim scope, requires working with a patent attorney who has in-depth knowledge of the blockchain patent space, knowledge of the blockchain- specific precedent, including USPTO guidance on patent-eligibility related to blockchain inventions, AI and design patents, as well as actual experience in obtaining these patents. As shown from some of the detailed examples above, an idea can be new and non-obvious, but if the patent attorney does not draft the claim properly, the claim may be rejected. For more information on blockchain patents see these papers:
Patent Strategies for Cryptocurrencies and Blockchain Technology
Drafting Effective Blockchain Patents
10 Things to Know About The Intersection of Blockchain Technology, Open Source Software, and Patents
Blockchain Games and Collectibles - Patents and Other Legal Issues