A Blockchain is a subtype of distributed ledger data structure, in which transaction are grouped into “blocks”. Technologies are developing that implement Blockchains to solve all sort of problems related to transaction, privacy, security, data integrity, double spending, payments, interoperability etc. Blockchain technologies are red-hot investment and development space right now will be for at least couple of years. Many Blockchain technology innovators begin with the same concerns.
These concerns inspire the following five points of considerations for innovators in Blockchain technologies who are interested in securing intellectual property rights.
1. Time is of the essence. In 2011, the United States passed the America Invents Act, which was legislation that changed the patenting regime such that between two competing inventors filing an application for patent rights in the same or similar invention, generally the first inventor to file with the United States Patent and Trademark Office (USPTO) is the one who gets to claim patent rights on the invention. Notice that Blockchain-technology patents granted in the US tie the inventions to the physical computer processors. That’s yet another Alice-inspired patent application drafting adaptation. Strongly consider filing a provisional patent application as soon as feasible. A provisional patent application does not need to be as detailed as a non-provisional patent application, thus they are drafted quicker than are non-provisional patent applications. The earlier a proper patent application is filed, the smaller the body of “prior art” from which the USPTO can pluck references to use against the invention’s patent application. Because time is of the essence, inventors will want to be organized enough to so that their patent attorneys can directly get to the meat of the innovative features of the invention.
2. Find an appropriate patent attorney. Not just any patent attorney– one with a technical background in computing applications. The laws surrounding software-implemented inventions are quite convoluted and complex since the Supreme Court case Alice (2014) took us all down the rabbit hole. So much so that many patent attorneys, who do not understand software applications well enough to understand the highly nuanced evolution of case law in this area, will say bizarre and wholly misleading things like “software can’t be patented.”
3. If the patent application is simple, it’s stupid. Inventors and their patent attorneys should study granted patents in this space. Not a single granted patent application in this space is written such that a layperson can easily understand the invention. This is absolutely appropriate because these applications are judged by the examiner under these criteria: they must be written so that a ‘person having ordinary skill in the art’ (PHOSITA) would be able to replicate and innovate off of the allowed patent application after the original invention’s patent term runs out.
4. But do keep it neatly comprehensible. Remember that examiners and judges at the USPTO that will be reading the patent application and that an assigned examiner might not know much about blockchain technologies yet. Good patent applications for cutting-edge technologies set definitions early and conspicuously in the patent application. Define blockchain! Blockchain networks and distributed ledger systems are not synonymous. There is even disagreement as to the whether or not ‘Blockchain’ is a concrete noun. If consensus protocols are integral to the invention, patent application drafters should take care to define and describe them. Many rejections of patent applications are as result of indefiniteness in the language of the application.
5. Many inventors will pursue patent protection on the down low as they try to figure out what exactly they’re going to do with the invention. Maybe the inventors are ultimately going to altruistically share the rights of to the technology for the greater good (altruism is a central cultural ideal and consideration in the original blockchain technology space or to get the network effects of a robust network of nodes. No one yet knows for sure, however, what the future of blockchain technologies will look like. This is why inventors and their investors may want to bundle the rights in their IP now so that their choices for disposition are not foreclosed at the outset.
