Distinguish “Smart Contract” From Abstract Idea To Pass Blockchain Patentability Scrutiny

By Yunlai Zha and Will Chen on April 5, 2021 Posted in Blockchain, Patents

The Situation

Smart contracts are often mentioned in blockchain-themed patent applications and recited in claims. However, Examiners without a thorough understanding of this concept or unfamiliar with blockchain technology often equate smart contracts with legal or commercial contracts stored on blockchains. As a result, the Examiners may find claims directed to merely applying the blockchain technology to execute legal or commercial contracts, for example, as part of a commerce system, like hedging. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. at 2356 (citing Bilski v. Kappas, 561, U.S. 593, 611 (2010)).

NFTs and Intellectual Property: What IP Owners and NFT Creators Need to Know

By James Gatto, Laura Chapman and Yasamin Parsafar on March 25, 2021 Posted in Art, Intellectual Property, NFTs

Everything is being tokenized these days, including art, games, collectibles and much more. The record prices being fetched have created an NFT frenzy. This distribution model has created a new channel for monetization of creative IP. Given some of the unique aspects of NFTs, IP owners need to rethink their IP protection and licensing strategies. IP protection strategies should include specific protection relating to NFTs. Due to some of the unique aspects of NFTs, various new considerations need to be addressed when licensing IP. NFT creators need to be mindful of potential infringement issues when using third party IP and should also consider IP protection for their original creations.

To learn more about this topic, read our whitepaper: NFTs and Intellectual Property: What IP Owners and NFT Creators Need to Know

Protecting IP and Limiting Liability When Licensing IP for Digital Art and NFTs

By James Gatto on March 24, 2021 Posted in Art, Intellectual Property, NFTs

Many things are being tokenized, but the growth of NFTs for digital art is booming. This, in part, is due to the recent headline news that Beeple’s iconic digital art work was sold at auction by Christie’s for $69 million. Other digital art is being created to leverage pre-exiting IP and physical art. This boom is creating great opportunities for IP owners who want to license their IP for use in NFTs. However, for those just entering the space, there are many things to consider given some of the unique aspects NFTs and digital art. Continue Reading

Blockchain Patentability Through The Lens Of A Recent PTAB Decision

By Yunlai Zha and Will Chen on March 3, 2021 Posted in Blockchain, Patents

Blockchain patent applications may be divided into two types: underlying technologies of blockchain, such as consensus methods, security, etc., and applications of blockchain in, e.g., fintech, legal, and other industries. In patent examination, the first type, because it recites underlying technology improvement, rarely elicits subject matter rejections. The second type, applications of blockchain, are often found to be directed to an abstract idea. This article analyzes a recent Patent Trial and Appeal Board (PTAB) decision in a blockchain patent application and explores drafting and prosecution strategies to anticipate subject matter scrutiny. Continue Reading

New York Attorney General Sues to Shutter Cryptocurrency Trading Firm Coinseed

By Christopher Bosch on February 26, 2021 Posted in Cryptocurrency

The Office of New York State Attorney General Letitia James (“NYAG”) has filed a lawsuit to shut down technology company Coinseed. The state has accused the firm of selling unregistered securities in the form of digital tokens and operating as an unregistered broker-dealer while making material misrepresentations about the company, its management team, and fees charged to investors in connection with cryptocurrency trades. Continue Reading

Tokenized Art Legal Issues

By James Gatto on February 25, 2021 Posted in Art

The tokenization of physical and digital art has many advantages. Some of the advantages create potential complexities under US law. Each situation is fact specific, but the following is a summary of some of the areas for which careful consideration is needed with tokenized art. This is not a complete list, but provides some of the most common issues that we typically see. These issues can impact the owners/creators of tokenized art as well as the exchanges and platforms that sell them. Continue Reading

How to Successfully Obtain Blockchain Patents

By James Gatto on February 25, 2021 Posted in Patents

As with other rapidly-evolving technologies, the blockchain space is experiencing a frenzy of patent activity. The data shows that there are 3-4 times as many published applications as there are issued patents for these concepts. This trend strongly suggests that the number of blockchain-related patents will surge in the next couple of years. However, due to recent changes in patent law, it is more important than ever to ensure that you analyze the patentability of blockchain inventions in light of these changes to target inventions likely to result in patents. Once likely patentable inventions are identified, it is critical to draft patent applications and claims based on knowledge of how the Patent Office has treated prior blockchain patent applications to maximize the likelihood of obtaining commercially meaningful, valid patents. For more information, view our Flipbook. Continue Reading

Key Insights for Obtaining FinTech Patents

By James Gatto and Timothy Cremen on February 11, 2021 Posted in Patents

As with other rapidly-evolving technologies, the FinTech space is experiencing a frenzy of patent activity. As its name implies, FinTech is part financial innovation (“fin”) relating to new aspects of finance and finance-related business models, and part technological innovation (“tech”) relating to the application of, and enhancements to, technology that enables the fin-related innovations. Unfortunately, this mixing of innovation often results in difficulties in obtaining patent protection under the USPTO’s ever-evolving tests for patent-eligible subject matter. Many patent applications for fin-related innovations are rejected by the USPTO as being an abstract idea or merely a business method implemented on a computer, both of which are deemed to not constitute patent-ineligible subject matter under the current USPTO guidance. Patent applications that focus on providing specific technical solutions to specific technical problems in the FinTech space often avoid these rejections. However, in some cases, patents that are limited to a specific technical solution can be designed around with an alternative technical solution. And often they do not capture the fin part of FinTech innovation. Continue Reading

FinCEN Announces Intention to Require FBAR Reporting of Crypto Currency

By James Gatto on January 28, 2021 Posted in Cryptocurrency, FinCEN, Regulatory

FinCEN has issued a notice that it intends to amend the regulations implementing the Bank Secrecy Act (BSA) regarding reports of foreign financial accounts (FBAR) to include virtual currency as a type of reportable account under 31 CFR 1010.350. Currently, the Report of Foreign Bank and Financial Accounts (FBAR) regulations do not define a foreign account holding virtual currency as a type of reportable account. (See 31 CFR 1010.350(c)). As a result, the notice indicates that “at this time, a foreign account holding virtual currency is not reportable on the FBAR (unless it is a reportable account under 31 C.F.R. 1010.350 because it holds reportable assets besides virtual currency).” Continue Reading

Regulatory Approaches to the Tokenisation of Assets

By James Gatto on January 27, 2021 Posted in Blockchain, Digital Assets, Regulatory

The Organisation for Economic Co-operation and Development (OECD) published a report on Regulatory Approaches to the Tokenisation of Assets (Jan. 2021). The report notes that: “Policy makers in different jurisdictions have approached tokenisation in different ways, either by applying existing financial regulations to tokenised assets; by introducing new tailor-made regulatory frameworks or by adapting existing rules to accommodate the application of DLTs in tokenisation.” Some of the key takeaways from the report are: Continue Reading