Page 3 - How to Successfully Obtain Blockchain Patents Brochure

Obtaining valuable patents in the blockchain space requires analyzing the inventive solution as a whole, at various levels (e.g., data structure, blockchain technology, application functionality and UI), to identify patentable aspects at the different levels and developing a comprehensive strategy to protect those innovations alone and/or in combination.
patent claim can often help create patent eligibility. However, merely taking a known idea and implementing it on a blockchain is not likely to be patentable. Patent applications that focus on providing specific technical solutions to specific technical problems in the blockchain space often avoid these rejections.
However, in some cases, patents that are limited to a specific technical solution can be designed around with an alternative technical solution. And often they do not capture the novel financial aspects of blockchain innovation.
are one aspect of the patentable invention. It is important to understand the various options that exist for protecting these UI-based inventions. In some cases, novel functional aspects of a UI-based invention can be patented (see Example 1 below regarding patentability of an invention for rearranging icons on a graphical user interface).
However, design patent protection may also be available for some aspects of UI-based inventions. In this regard, the USPTO has issued Guidelines for Examination of Design Patent Applications For Computer-Generated Icons,2 which make clear that both full screen displays and individual icons can be patent-eligible subject matter in a design patent when they comply with requirements. the “article of manufacture” requirement of 35 U.S.C. 171. According to the guidance, if an application claims a computer-generated icon shown on a computer screen, monitor, other display panel, or a portion thereof, the claim complies with the “article of manufacture” requirement.3 Given the greater scrutiny on the patent-eligibility of blockchain-related utility patents, consideration of design patent protection for certain UI-based inventions can enhance the scope of patent protection available.
The rest of this article further elaborates on the legal requirements for patent-eligibility of blockchain inventions, including USPTO guidance and examples relating to patent-eligibility of blockchain inventions and tips for developing strategies for obtaining valuable blockchain patents.
Patent Eligibility of Blockchain Inventions
Due to a Supreme Court decision known as the Alice case, the scope of patent-eligible subject matter in the US has been narrowed.4 At a high level, the Alice case expanded on the prohibition of patenting so-called “abstract ideas.” Unfortunately, the Supreme Court provided no definition for this concept. Courts and the USPTO have since struggled with articulating the boundaries of what is and what is not an “abstract idea.”
Obtaining valuable patents in the blockchain space requires analyzing the inventive solution as a whole, at various levels (e.g., data structure, blockchain technology, application functionality and UI), to identify patentable aspects at the different levels and developing a comprehensive strategy to protect those innovations alone and/or in combination.
Doing this requires a thorough understanding of how prior blockchain applications have fared in the USPTO and the courts. While each case is unique and must be evaluated on its own facts, understanding and leveraging prior examples of similar types of inventions that have been found patent-eligible (and crafting around those have not) is useful.
Some blockchain inventions relate to simplifying the user experience. In some cases, user interface (“UI”) features
2 https://www.uspto.gov/web/offices/pac/mpep/s1504.html
3 Full screen displays and individual icons can be patent-eligible subject matter in a design patent when they comply with the “article of manufacture”
requirement of 35 U.S.C. 171. According to the guidance, if an application claims a computer-generated icon shown on a computer screen, monitor, other
display panel, or a portion thereof, the claim complies with the “article of manufacture” requirement.
4 For a claimed invention to qualify as patent-eligible subject matter it must not be directed to a judicial exception to patentable subject matter unless
the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called “judicially recognized exceptions” or simply “exceptions”) are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention (processes, machines, manufactures and compositions of matter), and are limited to abstract ideas, laws of nature and natural phenomena (including 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). The most relevant exception for fintech applications is abstract ideas. Thus, this paper focuses primarily on this aspect of patentability.
3 | www.sheppardmullin.com
How to Successfully Obtain Blockchain Patents