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 functions. Specifically, over the previous yr, the Patent Trial and Enchantment Board (PTAB) has issued a number of selections on appeals of examiner rejections of blockchain patents below 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, after all, doesn’t imply that no blockchain patents are being issued; it solely implies that the choice to reject claims of explicit patent functions is left within the examiners’ arms. Nonetheless, this uniform affirmance of the rejections of blockchain functions just isn’t sudden given the up to date PTO Part 101 steerage printed 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 material of the functions — and which can appear to be the most secure plan of action for the PTAB.
A latest resolution that sheds some gentle on this constant affirmance of 101 rejections for blockchain functions 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 concept of “sure strategies of organizing human exercise as exemplified by the business and authorized interplay of managing business cost transactions by advising one to course of funds with an accessible cost instrument and submit the cost to a ledger, with out considerably extra.” Id. at 20. The PTAB defined why the claims had been ineligible, regardless that the claims embrace 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 basically an accounting ledger. The claims don’t recite any technological implementation particulars. As a substitute the claims recite not more than the conceptual concept 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 traditional. Such recital does not more than invoke the conceptual concept 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 concept. Id. at 17-19. The PTAB discovered that when the claims are analyzed individually and as an ordered mixture, they’re “purely typical” and peculiar. Id. at 17-19.
This resolution is informative for find out how to proceed earlier than the PTO. Specifically, one ought to be cautious of invoking blockchain know-how as a method of enhancing present enterprise practices. In different phrases, claims that take an current monetary observe and “do it with a blockchain” are hard-pressed to move 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.
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