Blockchain patent functions could also be divided into two varieties: underlying applied sciences of blockchain, similar to consensus strategies, safety, and so forth., and functions of blockchain in, e.g., fintech, authorized, and different industries. In patent examination, the primary kind, as a result of it recites underlying expertise enchancment, not often elicits subject material rejections. The second kind, functions of blockchain, are sometimes discovered to be directed to an summary thought. This text analyzes a latest Patent Trial and Attraction Board (PTAB) choice in a blockchain patent utility and explores drafting and prosecution methods to anticipate subject material scrutiny.
Patent Eligibility Beneath the U.S. Patent System
An invention, to be patent-eligible, should first fall inside one of many 4 enumerated classes of patentable subject material recited in 35 U.S.C. § 101 (i.e., course of, machine, manufacture, or composition of matter). See MPEP § 2106.04. Although virtually all blockchain patent functions cross this primary step, some face scrutiny beneath the second step of the § 101 summary thought exception evaluation.
The USPTO primarily splits the second step into 2A (is the declare directed to an summary thought (a judicial exception)?) and 2B (does the declare recite extra parts that quantity to considerably greater than the judicial exception?). Step 2A additionally has two prongs. For blockchain utility, the primary prong primarily is to find out whether or not the claims recite an summary thought, i.e., (1) mathematical ideas; (2) sure strategies of organizing human exercise; and (3) psychological processes. If a blockchain patent utility just isn’t directed to any of those classes, it’s going to most probably be patent-eligible. In any other case, the subject material evaluation proceeds to the second prong, the place the Examiners are to find out if the exception is built-in right into a sensible utility. To this finish, the Examiners ought to (1) establish whether or not there are any extra parts past the summary thought, and (2) consider these parts to find out whether or not they combine the exception right into a sensible utility. Two examples of sensible utility supplied by the USPTO are most related to blockchain patent functions: (i) an enchancment in pc functionalities, and (ii) limiting the judicial exception in another significant method past usually linking to a technological setting. See MPEP § 2106.04(d)(I).
Lastly, even when the claims don’t cross Step 2A, they’re analyzed beneath Step 2B, the place the Examiner should decide if there may be an creative idea such that the extra parts recited within the claims present considerably greater than the judicial exception.
Attraction 2019-004127 (Determined August 19, 2020)
Determination: 35 U.S.C. § 101 rejection of claims 1-16 reversed
This case entails the PTAB’s reversal of the § 101 rejection of claims 1-16 within the 14/719,030 patent utility. This patent utility pertains to “the linking of blockchain transactions to privately verified identities, particularly the affiliation of a blockchain transaction to a client or service provider related to a transaction account based mostly on transaction knowledge and saved account profiles.” The applying acknowledges disadvantages of blockchain transactions similar to lengthy processing time, payee’s lack of ability to establish payor, and sole reliance on digital credentials to determine possession to digital currencies. The invention addresses such points by combining the blockchain community and the standard cost community.
Declare 1 of the appliance reviewed by the PTAB recites:
1. A way for linking blockchain transactions to privately verified identities, comprising:
[A] storing, in an account database of a pc system, a plurality of account profiles, whereby every account profile contains knowledge associated to a transaction account together with not less than an account identifier and account knowledge;
[B] receiving, by a receiver of the pc system, a transaction message through a cost community, whereby the transaction message is formatted based mostly on a number of requirements and features a plurality of knowledge parts together with not less than a primary knowledge component configured to retailer a private account quantity, a second knowledge component configured to retailer a service provider identifier, and a 3rd knowledge component configured to retailer not less than a blockchain community identifier and the place the third knowledge component or a fourth knowledge component is configured to retailer a digital signature;
[C] figuring out, by a processor of the pc system, a primary account profile saved within the account database the place the included account identifier corresponds to the private account quantity saved within the first knowledge component included within the acquired transaction message, and whereby the primary account profile features a public key;
[D] figuring out, by the processor of the pc system, a second account profile saved within the account database the place the included account identifier corresponds to the service provider identifier saved within the second knowledge component included within the acquired transaction message;
[E] receiving, by the receiver of the pc system, a transaction notification, whereby the transaction notification signifies a transaction processed utilizing a blockchain community related to the blockchain community identifier saved within the third knowledge component included within the acquired transaction message and contains not less than a transaction identifier and an handle identifier related to one of many first account profile and the second account profile, and the place the handle identifier is generated utilizing the general public key;
[F] verifying, by the processor of the pc system, the digital signature utilizing the general public key included within the first account profile; and
[G] storing, by the processor of the pc system upon verification of the digital signature, a linkage between the transaction identifier included within the acquired transaction notification and not less than certainly one of: the handle identifier, the private account quantity, and the service provider identifier.
(Emphases and labels of declare limitations added)
Beneath Step 2A Prong 1, the PTAB agreed with the Examiner on discovering the claims directed to an summary thought of storing knowledge, receiving knowledge, figuring out knowledge, and verification. The PTAB additional agreed with the discovering of the claims directed to sure strategies of organizing human actions, specifically “industrial transaction processing similar to blockchain cost transaction, utilizing each normal cost and blockchain cost parts to confirm the identification of the payor.” Accordingly, the PTAB decided the claims to recite basic financial apply, which is an summary thought.
Beneath the identical prong, nonetheless, the PTAB rejected the Examiner discovering that the claims have been additionally or alternatively directed to psychological processes. The PTAB sided with the Appellant who argued that “the claims recite the specific use of a lot of applied sciences that can not be carried out by human work or mentally, even given a big period of time,” as a result of “digital signatures are of enough knowledge measurement and complexity to not be understood by human psychological work, not to mention verified by using a public key and overly complicated (by design) signature algorithms” and that “transaction messages are processed in speeds that need to be measured in nanoseconds for community reliability and because of the overwhelming variety of transaction processed every day, necessitating using specialised pc programs, which is inconceivable to copy by human psychological work.” In one other phrase, performing the claimed invention with the human thoughts is impractical.
Transferring on to Step 2A Prong 2, the PTAB recognized extra parts integrating the summary thought right into a sensible utility that mixes benefits of each blockchain processing system (e.g., anonymity) and normal cost processing system (e.g., pace, safety, fraud prevention).
When figuring out extra parts past the summary thought, the Examiner solely discovered “a database,” “a pc system,” and “a processor” are positively recited within the claims. Though indirectly addressing the optimistic recitation challenge, the PTAB agreed with the Appellant and acknowledged the ordered mixture of “an account database,” “a receiver of the pc system,” “a cost community,” “a processor,” and “a blockchain community” to represent the extra parts. The PTAB agreed that the claims require utilizing each networks (i.e., the usual cost community and the blockchain community) with the pc system to make sure that the get together within the submitted transaction message was a celebration to the blockchain transaction. Accordingly, the PTAB included “a cost community” and “a blockchain community” within the following analysis of the extra parts.
When figuring out whether or not the extra parts combine the summary thought right into a sensible utility, the Examiner concluded that the database, the pc system, and the processor merely served as instruments for implementing the summary thought and don’t enhance the capabilities of the pc system or in any other case. The PTAB, then again, centered on enhancements to the technological area of blockchain transactions carried out utilizing computer systems, such that the blockchain system can purchase the benefits of pace, safety, and fraud prevention of the usual cost processing system. To perform these enhancements, the Appellant contended that the ordered mixture of the extra parts hyperlinks blockchain transactions to privately verified identities. Particularly, the PTAB agreed with the Appellant that the claims “provid[e] the safety of normal cost processing programs (e.g., by figuring out first and second account profiles in limitations C and D of declare 1), and the privateness of blockchain cost transactions (e.g., through the use of a blockchain community to generate an handle identifier utilizing a public key in limitation E of declare 1), to confirm a digital signature (e.g., limitation F of declare 1) saved in knowledge parts of a receiver of the pc system (e.g., limitation B of declare 1) that’s a part of the account database (e.g., limitation A of declare 1).”
General, the identification of the 2 networks as extra parts and clear help for the enhancements to the blockchain system seem like the important thing for the PTAB to search out for the Appellant.
As proven by the reasonings above, blockchain functions by nature can hardly be directed to psychological processes. Reciting options similar to digital signature and consensus verification in claims could make it seem even much less accomplishable with pen and paper in apply.
Enchancment to pc performance such because the safety and pace of processing blockchain transactions is more likely to be acknowledged as a sensible utility. Specifically, enhancing the blockchain community with a typical kind of pc community will probably be discovered as a sensible utility. It will be important for blockchain patent drafters to consider how the combination of various pc networks improves the performance of every community and clarify clearly within the specification.
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