Page 35 - November 2018 | Cleveland Metropolitan Bar Journal

INTELLECTUAL PROPERTY

and conventional elements. Judge Moore larger companies with larger IP budgets. the rules of the game are developing in real
finding for Berkheimer stated that in the One may expect a small licensing company time and are known to change in mid-play.
context of an invalidity analysis, whether like Winklevoss IP, LLC to restrict its IP Perhaps we can look to the successes of
an element is well-understood, routine, investments to technologies with a higher companies like these for insight on how best
or conventional is a question of fact that likelihood of success, and to technologies to stake out, and capitalize on, a blockchain
must be proven by clear and convincing that provide a more calculated strategic claim in light of Berkheimer.
evidence. Although the evidentiary advantage. In contrast, one may expect a
standard in summary judgment is certainly large company like IBM or Mastercard to
not the same as that of prosecution before take more risks because they have a greater Dominic A. Frisina J.D., M.A.’s
the USPTO, the Berkheimer decision capacity to tolerate losses. practice encompasses all segments
prompted the Patent Office to revise its Apart from selection criteria, an of intellectual property as well as
policy regarding Mayo Step Two. In a new admittedly anecdotal sampling of the typically concomitant business
guidance memorandum issued April 19, prosecution histories suggest that the and transactional work necessary
2018 Deputy Commissioner Bahr wrote smaller but more successful blockchain to technology-based ventures. Having diverse
“Berkheimer informs the inquiry into players are exercising certain tactics that technical education and experience he covers a
whether an additional element… represents may not be as frequently or successfully range of technologies spanning electrical, software,
well-understood, routine, [or] conventional used by larger but less-successful players. and chemical arts. With professional versatility
activity.” The new guidance indicates that One observed tactic is to draft the he brings a holistic approach to counseling clients.
in addition to the existing requirements of application so that it is likely to be classified He is convinced that properly advising clients
MPEP 2106.05(d), the supporting analysis favorably. Cases are assigned to art units regarding their intellectual property requires a
must be based on a factual determination within the USPTO according to the class broad view of how their IP cooperates with their
similar to a §112(a) analysis of whether an of technology they teach. Certain art units business objectives and corporate structure. He
element is so well-known that it need not be are much more prone than others to issuing joined the CMBA this year. Dominic can be
described in detail in the specification. patent-eligibility rejections. Practitioners reached at (440) 600-3038 or dominic@frisinaip.
The revised policy goes a long way have some latitude to couch the invention com. Follow him on Twitter @Frisinaip.
toward ending examiners’ common practice in terms that suggest assignment to
of making vague and unsupported patent a favorable art unit. This unscientific
ineligibility rejections because it provides a sampling of cases may infer that this tactic
means of overcoming them based on official is used more successfully by small versus Niki Z. Schwartz
examination policy. As a practical matter, large companies.
the revision is so new that its effects cannot Another observed tactic leverages a safe Mediator/Arbitrator
be seen in the blockchain patent grant harbor set forth in the case law. Namely, to
data; however, patent examiners, not being claim an improvement to the functioning of
attorneys, are bound to follow the Office’s a computer, or to another area of technology.
internal policy. For that reason, citing policy Importantly, the improvement must be
th
documents like the April 19 guidance described with technical particularity
memorandum to an examiner is far more in the specification, and then the
persuasive than citing case law that the improvement must be explicitly claimed.
examiner is not at liberty to independently This is challenging in software and business
interpret or apply. method cases because, unlike describing the
parts of a motor or the atoms of a molecule,
Who is innovating in blockchain? there is no commonly accepted lexicon to
The top filers of US blockchain patent lend precision. It can be tempting to draft
applications include traditional technology, in terms of actions performed by a software
financial, and retail giants IBM, Bank of component rather than in terms of the “If he can settle
America and Wal-mart. As established logical structure of the component. Lacking a prison riot,
players they have the capital to invest in large a lexicon, terms must be carefully defined so
patent portfolios; however, a large war chest that a skilled programmer would understand he can settle
does not equate to an effective strategy. To the how to write corresponding code.
contrary, several relatively small companies While IBM and Mastercard are developing anything!”
have much higher success rates, resulting substantial blockchain patent portfolios,
in portfolios of granted blockchain patents certain startups like Winklevoss IP and
comparable to that of the giants. This might be IDM Global seem to have a better handle 216-696-7100
understood in terms of how technologies are on how to navigate the ever-shifting sands
selected for patent protection. Particularly, of software patent law. The software patent nzs.adr@gmail.com
selection criteria may be less stringent at game is particularly challenging because
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