USPTO and US Copyright Office To Conduct a Joint Study on Intellectual Property Law and Policy Issues Related to NFTs | Skadden, Arps, Slate, Meagher & Flom LLP

USPTO and US Copyright Office To Conduct a Joint Study on Intellectual Property Law and Policy Issues Related to NFTs | Skadden, Arps, Slate, Meagher & Flom LLP

On November 23, 2022, the U.S. Patent and Trademark Workplace (USPTO) and the U.S. Copyright Business office issued a Federal Register See (Notice) asserting the offices’ joint research of intellectual home (IP) challenges linked to non-fungible tokens (NFTs). In link with the joint analyze, the USPTO and Copyright Business office are seeking community comment and will host a few public roundtables more than the following two months.

General public Remark

In accordance to the Detect, the USPTO and Copyright Place of work will welcome any comments in the course of the general public comment time period that problem IP difficulties related to NFTs. In addition, the See lists a range of focused topics and issues that are of distinct curiosity to the two workplaces. These types of subject areas and queries generally relate to:

  • IP problems or possibilities offered by NFTs and NFT-linked marketplaces
  • information and facts on whether current IP rules are sufficient to shield and implement IP in the NFT context
  • facts on irrespective of whether, how and to what extent NFTs are at the moment employed or could be utilised by IP rights holders and
  • adjustments, if any, to IP portfolio arranging and administration thanks to the emergence of NFTs.

Two areas of distinct observe problem challenges surrounding (i) whether or not any license rights and limits related with an NFT “travel” with that NFT upon subsequent sale or transfer and (ii) NFT royalty payments. Whilst the proposed public remark topics and issues do not deal with the initial problem directly, a selection of the listed subject areas and inquiries generally concern the troubles IP rights holders may encounter in looking for to express license terms to upcoming purchasers. In addition, the payment of royalties on the major and secondary sale of NFTs has been an space of heightened emphasis in the NFT sector, as an increasing range of marketplaces have both stopped honoring NFT royalty payment prerequisites or have rethought their strategy with respect to the concern. In that regard, a person of the recommended subjects for remark with regards to IP rights holders is notably “overall command and administration of their IP rights (e.g., electronic legal rights management tools, mechanisms to facilitate the payment of royalties, and many others.).”

To encourage consistency amid responses, the USPTO and Copyright Office environment give Merriam Webster’s definition for the term “NFT”: “a special digital identifier that are not able to be copied, substituted, or subdivided, that is recorded in a blockchain, and that is applied to certify authenticity and possession (as of a unique electronic asset and unique rights relating to it).”1 The places of work make very clear that, for needs of the proposed general public remark inquiries, use of “NFT” should be read through in accordance with this definition and, consequently, the phrase “NFT” refers to the one of a kind identifier and not the fundamental asset. To the extent commenters like to use a various definition of “NFT” when publishing their reaction, they may do so, offered they point out their desired definition and demonstrate how it is suitable to their response.

The full checklist of topics and thoughts can be uncovered listed here.2 Remarks need to be been given by way of the Federal eRulemaking Portal by 11:59 p.m. ET on January 9, 2023.

Community Roundtables

The joint research will also involve the pursuing a few community roundtables in January 2023:

  • “Patents and NFTs” on January 10
  • “Trademarks and NFTs” on January 12 and
  • “Copyright and NFTs” on January 18.

Every single roundtable will be executed virtually and livestreamed to members of the community who sign up. Movie recordings and transcripts of the roundtables will be posted to the USPTO and Copyright Office environment sites.

The USPTO and Copyright Workplace condition that they purpose to invite panelists that possess a range of views on the indicated topic subject of every roundtable. Requests to serve as a panelist on just one or a lot more of the roundtables ought to be received through electronic mail by 11:59 p.m. ET on December 21, 2022, but the USPTO and Copyright Place of work have also indicated that they might invite persons and entities who have not submitted a request. The submission of created responses during the community remark interval is not a prerequisite to serve as a panelist on a roundtable.

Key Takeaways

The Observe follows a letter sent by Sens. Patrick Leahy (D-VT) and Thom Tillis (R-NC) to the USPTO and Copyright Workplace in June of this year, requesting that the two offices perform a joint study to appraise the intersection of IP and NFTs by June 2023.3 Whilst the affect of the examine continues to be to be seen, it marks an essential step in addressing IP difficulties related to NFTs, although also highlighting the significance of public enter on the topic. The study arrives soon after a yr of uptick in organizations submitting trademark programs for activities similar to NFTs and need to supply more clarity for individuals firms participating in the NFT place.

Affiliate Shannon N. Morgan assisted in the planning of this customer notify.


1 See Research on Non-Fungible Tokens and Relevant Mental Residence Legislation Concerns and Merriam-Webster.


3 See Two U.S. Senators Solicit Review of Intellectual Property Rights Similar to NFTs.