Page 7 - How to Successfully Obtain Blockchain Patents Brochure

• Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with an abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process; or
• Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets.
As can be seen in the following discussion, care must be taken to adequately describe in the application both the technical problem and technical solution, and to include claim language that recites elements of the technical solution in a manner that provides the “inventive concept” under Step 2B.
Categories of Improvements To Consider Under Step 2A-Prong 2 or Step B
Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field
Under this category, the guidelines direct consideration of whether the claim purports to improve the functioning of the computer itself, other technology or a technical field. This consideration has also been referred to as the search for a technological solution to a technological problem, and is often what is argued to show blockchain claims are patent-eligible. This is one of the reasons why the more “tech-heavy” a blockchain claim is, the less likely it is to face a patent-eligibility rejection. However, such “tech-heavy” claims are also less likely to broadly cover a financial-related innovation.
According to the guidance, if an applicant argues that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification and provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. However, it is advisable to include the improvement in the specification along with how it is implemented to make patentability arguments more straightforward. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an
improvement without the detail necessary to be apparent to a person of ordinary skill in the art), it will be harder to successfully argue that the claim improves technology.
An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. When relying on this basis to show patent-eligibility, it is important to ensure that drafting of the specification and claims takes the technical problem/ technical solution into account.
As one example, a court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific lip-syncing animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. In contrast, another court relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible.
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How to Successfully Obtain Blockchain Patents
An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.