The USPTO has prepared soon to be published supplemental guidance for design patent examination for computer-generated electronic images. This guidance relates to determining whether a design patent claim including a computer-generated electronic image per se or a computer-generated electronic image shown on a display panel (e.g., computer screen, monitor, computer display system, mobile phone screen, virtual reality/augmented reality goggles), or a portion thereof, satisfies the article of manufacture requirement in 35 U.S.C. 171. This guidance supplements the guidance provided in section 1504.01(a), subsection (I) of the Manual of Patent Examining Procedure (MPEP). According to the USPTO, this supplemental guidance does not change the current guidance but provides important clarifications.Continue Reading USPTO Guidance on Design Patents Including a Computer-Generated Electronic Image

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)).Continue Reading Distinguish “Smart Contract” From Abstract Idea To Pass Blockchain Patentability Scrutiny

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 Blockchain Patentability Through The Lens Of A Recent PTAB Decision

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 How to Successfully Obtain Blockchain 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 Key Insights for Obtaining FinTech Patents

We previously reported on how popular open source has been under attack from patent assertion entities. The attacks continue. The GNOME Foundation recently acknowledged that it was sued for patent infringement by Rothschild Patent Imaging LLC. The allegedly infringing product is Shotwell, a free and open source personal photo manager. Neil McGovern, Executive Director for the GNOME Foundation says “We have retained legal counsel and intend to vigorously defend against this baseless suit.” The suit alleges infringement of a single patent 9,936,086 titled “Wireless Image Distribution System and Method.”
Continue Reading Patent Attacks Against Open Source Intensify!

Sound View Innovations is launching patent attacks against commonly used open source software including jQuery and Apache Hadoop. Sound View is targeting end users of these software components. This is a typical tactic of non-practicing patent assertion entities. Unlike some commercial software, most open source software is licensed with a disclaimer of any warranties regarding patent infringement. This makes it harder for end users to look to software publishers for indemnity. The interplay between patents and open source is often misunderstood. For clarification on some of these issues see our paper on Patent Issues with Open Source Software.
Continue Reading Popular Open Source Software under Patent Attack

On their own, blockchain technology, open source software, and patents each present legal issues that are often complex and frequently misunderstood. When combined, the complexity and misunderstandings of these three
Continue Reading 10 Things to Know About The Intersection of Blockchain Technology, Open Source Software, and Patents

Blockchain has long been touted as having transformational potential. Yet, the commercial adoption has been slow. As with any cutting-edge technology, commercial adoption usually requires some tipping point. For adoption of blockchain-based supply chain, the tipping point may just have occurred.

According to a recent article, starting in September 2019, Walmart and its Sam’s Club division will require suppliers of fresh, leafy greens to implement real-time, end-to-end traceability of products back to the farm using a digital ledger. They plan similar mandates for other fresh fruit and vegetable providers within the next year. This will apparently require more than 100 companies to use this blockchain-solution.
Continue Reading The Blockchain-based Supply Chain Adoption Tipping Point?