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After reviewing the First District court case on
35 U.S.C. 101 for a blockchain patent, we wished to examine in
and see how the U.S. Patent and Trademark Workplace (PTO) has been
dealing with blockchain-related patent purposes. Specifically,
over the previous 12 months, the Patent Trial and Attraction Board (PTAB) has
issued a number of selections on appeals of examiner rejections of
blockchain patents beneath Part 101. Of those, the PTAB has not
reversed any rejections made on Part 101 grounds: https://developer.uspto.gov/ptab-web/#/search/decisions
(search “blockchain”). This, in fact, doesn’t imply
that no blockchain patents are being issued; it solely signifies that the
choice to reject claims of specific patent purposes is left
within the examiners’ palms. Nonetheless, this uniform affirmance of
the rejections of blockchain purposes shouldn’t be sudden given
the up to date PTO Part 101 steering revealed in January of 2019
and the present inconsistent dealing with of Part 101 within the courts.
See 2019 Revised Patent Topic Matter Eligibility
Steering, 84 Fed. Reg. 50 (Jan. 7, 2019). Given the current
uncertainty within the legislation, the PTAB seems to be leaving the choice
to the examiners, who’re closest to the precise subject material of
the purposes – and which can appear to be the most secure course of
motion for the PTAB.
A latest choice that sheds some mild on this constant
affirmance of 101 rejections for blockchain purposes is Ex
parte McCann, No. 2021-003397 (P.T.A.B. March 7,
2022). There, the PTAB reviewed declare 1 of the ‘824 software
and located it directed to the summary thought of “sure strategies
of organizing human exercise as exemplified by the business and
authorized interplay of managing business fee transactions by
advising one to course of funds with an obtainable fee
instrument and put up the fee to a ledger, with out considerably
extra.” Id. at 20. The PTAB defined why the claims
had been ineligible, despite the fact that the claims embody a recital of a
blockchain and cryptographic knowledge:
As to the recital of a block chain
[sic], a block chain per se is generic and traditional
and is actually an accounting ledger. The claims
don’t recite any technological implementation particulars. As a substitute the
claims recite not more than the conceptual thought of utilizing a block
chain for storage. Appellant [sic] don’t contend they invented
block chain know-how.
Equally, the recital of
cryptographic knowledge is each generic and
typical. Such recital does not more than invoke
the conceptual thought of cryptography with out reciting any
technological software or implementation particulars.
Id. at 14-15. The PTAB went on to seek out that the claims
fail to offer an ingenious idea as a result of they don’t present
considerably greater than the recited summary thought.
Id. at 17-19. The PTAB discovered that when the
claims are analyzed individually and as an ordered mixture,
they’re “purely typical” and
abnormal. Id. at 17-19.
This choice is informative for the best way to proceed earlier than the PTO.
Specifically, one ought to be cautious of invoking blockchain know-how
as a approach of bettering present enterprise practices. In different phrases,
claims that take an present monetary apply and “do it
with a blockchain” are hard-pressed to go Part 101
scrutiny. As a substitute, claims have a greater likelihood in the event that they spotlight
how their claims enhance the operation of the underlying blockchain
know-how.
The content material of this text is meant to offer a common
information to the subject material. Specialist recommendation ought to be sought
about your particular circumstances.
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