U.S. Copyright, Patent and Trademark Offices to Conduct Publicly Available Roundtable Discussions Regarding NFTs in January 2023January 3, 2023

NFTs represent unique and individualized digital identifiers that cannot be copied, substituted, or subdivided, unlike cryptocurrencies. Both technologies are built and reside on blockchain technology. Both NFTs and cryptocurrencies have a complicated relationship with the patent, trademark, and copyright systems.

For example, U.S. copyright laws do not automatically give an NFT owner any rights in digital artwork associated with the minting of an NFT. Unless the creator takes affirmative steps to transfer some intellectual property right — e.g., by executing a standard, formal copyright license to the work connected to the NFT — the person is buying little more than a link to the digital artwork.

Some NFTs can be categorized as a copy or even a derivative of the original work. Under U.S. copyright laws, only the copyright holder has the authority to transform the original work into an NFT. Persons trying to sell NFTs in connection with works they do not own can face fines and/or jail time under U.S. copyright laws.

On the patents side, if a specific iteration of an NFT or blockchain makes a technical contribution over the art and otherwise satisfies all other criteria for a patent, i.e., it is not abstract, then an NFT can be patentable, just like any other software which fulfills a specific task or objective.

On June 9, 2022, Senators Patrick Leahy and Thom Tillis sent a letter to the Offices requesting that they conduct a joint study addressing various intellectual property law and policy issues associated with NFTs. The letter urged the Offices to “consult with the private sector, drawing from the technological, creative, and academic sectors.”

More recently, the U.S. Copyright Office and the U.S. Patent and Trademark Office (USPTO) published a Federal Register notice announcing an extension of time for submitting comments and new roundtable dates for their joint study of non-fungible tokens (NFTs). Specifically, in response to stakeholder requests, the Offices are extending the January 9, 2023, deadline for submission of comments. Comments must be received no later than 11:59 p.m. eastern time on February 3, 2023. The notice also announces new dates for the virtual public roundtables. The patent roundtable will be held on January 26; the trademark roundtable will be held January 24; and the copyright roundtable will be held on January 31, 2023.

The first program in the series of virtual roundtables focuses on patents and NFTs. Registration for the live-streamed event requires registration, which can be accomplished via the link at https://www.uspto.gov/ip-policy/patent-policy/roundtable-patents-and-non-fungible-tokens. The second program focuses on trademarks and NFTs, and registration can be accomplished at https://www.uspto.gov/ip-policy/trademark-policy/roundtable-trademarks-and-non-fungible-tokens. The third program focuses on copyrights and NFTs. Registration has not yet been made available to the public, however the USCO has confirmed a registration page will be available closer to the roundtable date.

These studies continue the two offices’ ongoing work to explore emerging technologies and their implications for IP rights. They provide panelists—including technologists, patent owners and practitioners, academics, and industry representatives—with an opportunity to share their knowledge and inform a joint study conducted by the United States Patent and Trademark Office (USPTO) and the United States Copyright Office.

Gregory Lars Gunnerson is an Intellectual Property Attorney in the Mechanical and Electrical Patent Practice Groups at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Lars directly via email at gregory.gunnerson@ipmvs.com.