IP Library Granted Patent US 12,223,496
Granted Patent B2
US 12,223,496 · App. 18/519,613 · Granted Feb 11, 2025

Self-enforcing security token implementing smart-contract-based compliance rules consulting smart-contract-based global registry of investors

Inventors: Scott Overholser (Salt Lake City, UT); Robert Christensen (Sandy, UT); Nicole Sanders (Cottonwood Heights, UT); Justin Wilson (Draper, UT); Robert Valmassoi (New York, NY); Chase Lester (West Jordan, UT); Michael William Stuart Smith (Provo, UT); Andrew Warner (Midvale, UT)
Assignee: tZERO IP, LLC
G06Q20/367G06F16/1834G06Q20/0658G06Q20/3672G06Q20/389G06Q20/405H04L9/3236H04L63/20G06Q2220/00H04L9/50H04L2209/56
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Quick Facts
Patent No.
US 12,223,496
App. No.
18/519,613
Granted
Feb 11, 2025
Kind
B2
Abstract

A network node in a peer-to-peer network of nodes includes at least one processor, at least one memory, and at least one network interface. The at least one processor is configured to receive a request to transfer a security token and execute a plurality of compliance rules associated with the security token. At least one of the compliance rules is implemented using at least one smart contract. The at least one smart contract references a global registry. The at least one processor is also configured to transfer the security token based on the execution of the compliance rules. The global registry includes personally identifiable information (PII) hash(es) for each of at least one investor associated with the transfer of the security token. The hashes are committed to the distributed ledger and updated when PII of a respective one of the at least one investor changes.

Claims (68)

1. A network node comprising:

at least one processor;

at least one memory communicatively coupled to the at least one processor;

at least one network interface communicatively couple to the at least one processor;

wherein the network node is configured to be within a plurality of network nodes communicatively coupled in a peer-to-peer network of network nodes implementing a distributed ledger; and

wherein the network node is configured to be communicatively coupled to at least one remotely located computing device through the at least one network interface;

wherein the at least one processor is configured to:

receive, from a remotely located computing device, a request to transfer a security token;

execute a plurality of compliance rules associated with the security token, wherein at least one of the plurality of compliance rules is implemented using at least one smart contract, wherein the at least one smart contract references a global registry; and

transfer the security token based on the execution of the plurality of compliance rules, wherein the global registry comprises at least one personally identifiable information (PII) hash for each of at least one investor associated with the transfer of the security token, wherein the at least one PII hash for each of the at least one investor is committed to the distributed ledger, wherein each of the at least one PII hash is updated when PII of a respective investor of the at least one investor changes.

2. The network node of claim 1 , wherein the security token is a cryptographic token that represents an external, tradeable asset.

3. The network node of claim 1 , wherein the global registry comprises indication of at least one of:

whether an offering of the security token qualifies under Securities and Exchange Commission (SEC) Regulation A;

whether at least one of the at least one investor qualifies under SEC Regulation D; or

whether the offering of the security token qualifies under SEC Regulation S.

4. The network node of claim 3 , wherein the global registry further comprises indication of at least one of:

whether anti-money laundering and know-your-customer (AML/KYC) checks have been performed for the at least one investor associated with the transfer of the security token; or

a length of time a particular security token has been owned by a particular investor.

5. The network node of claim 4 , wherein the global registry further comprises indication of at least one of:

whether a freeze has been placed on any of the at least one investor;

whether a freeze has been placed on the security token;

whether a freeze has been placed on a custodian associated with the transfer of the security token; or

whether a freeze has been placed on any broker dealer associated with the transfer of the security token.

6. The network node of claim 5 , further comprising at least one of:

wherein a freeze is placed on or removed from any of the at least one investor by modifying first attributes in an investor element in the global registry;

wherein a freeze is placed on or removed from the security token by modifying second attributes in a security token element in the global registry;

wherein a freeze is placed on or removed from the custodian by modifying third attributes in a custodian element in the global registry; or

wherein a freeze is placed on or removed from any broker dealer associated with the transfer of the security token by modifying fourth attributes in a broker dealer element in the global registry.

7. The network node of claim 5 , wherein the global registry comprises a data storage smart contract that stores at least one indication in the global registry.

8. The network node of claim 1 , wherein the security token stores a table that indicates a length of time a particular security token has been owned by a particular investor.

9. The network node of claim 1 , wherein the security token is implemented using an originating smart contract.

10. The network node of claim 1 , wherein a record of an issuance of the security token is recorded on the distributed ledger.

11. The network node of claim 1 , wherein a record of the transfer of the security token is committed to the distributed ledger.

12. The network node of claim 1 , wherein the request to transfer the security token is a request to transfer the security token from a first address to a second address, wherein the at least one processor is configured to:

before the request to transfer the security token is received, determine a split ratio for a new split of security tokens held in at least one address of the distributed ledger without updating token balances on the distributed ledger;

determine a split-updated token balance for at least the first address based on at least an indication of the split ratio; and

wherein the token balances on the distributed ledger are updated for at least the first address based on the split-updated token balance for at least the first address as part of a transaction associated with the transfer of the security token.

13. A computerized method for transferring a self-enforcing security token, wherein the computerized method is performed by a network node configured to be included within a plurality of network nodes in a peer-to-peer network of network nodes implementing a distributed ledger, wherein the network node is configured to be communicatively coupled to other network nodes in the peer-to-peer network, the computerized method comprising:

receiving, from a remotely located computing device, a request to transfer a security token;

executing a plurality of compliance rules associated with the security token, wherein at least one of the plurality of compliance rules is implemented using at least one smart contract, wherein the at least one smart contract references a global registry; and

transferring the security token based on the execution of the plurality of compliance rules, wherein the global registry comprises at least one personally identifiable information (PII) hash for each of at least one investor associated with the transfer of the security token, wherein the at least one PII hash for each of the at least one investor is committed to the distributed ledger, wherein each of the at least one PII hash is updated when PII of a respective investor of the at least one investor changes.

14. The computerized method of claim 13 , wherein the security token is a cryptographic token that represents an external, tradeable asset.

15. The computerized method of claim 13 , wherein the global registry comprises indication of at least one of:

whether an offering of the security token qualifies under Securities and Exchange Commission (SEC) Regulation A;

whether at least one of the at least one investor qualifies under SEC Regulation D; or

whether the offering of the security token qualifies under SEC Regulation S.

16. The computerized method of claim 13 , wherein the global registry further comprises indication of at least one of:

whether anti-money laundering and know-your-customer (AML/KYC) checks have been performed for at least one investor associated with the transfer of the security token; or

a length of time a particular security token has been owned by a particular investor.

17. The computerized method of claim 16 , wherein the global registry further comprises indication of at least one of:

whether a freeze has been placed on any of the at least one investor;

whether a freeze has been placed on the security token;

whether a freeze has been placed on a custodian associated with the transfer of the security token; or

whether a freeze has been placed on any broker dealer associated with the transfer of the security token.

18. The computerized method of claim 17 , further comprising at least one of:

wherein a freeze is placed on or removed from any of the at least one investor by modifying first attributes in an investor element in the global registry;

wherein a freeze is placed on or removed from the security token by modifying second attributes in a security token element in the global registry;

wherein a freeze is placed on or removed from the custodian by modifying third attributes in a custodian element in the global registry; or

wherein a freeze is placed on or removed from any broker dealer associated with the transfer of the security token by modifying fourth attributes in a broker dealer element in the global registry.

19. The computerized method of claim 17 , wherein the global registry comprises a data storage smart contract that stores at least one indication in the global registry.

20. The computerized method of claim 13 , wherein the security token stores a table that indicates a length of time a particular security token has been owned by a particular investor.

21. The computerized method of claim 13 , wherein the security token is implemented using an originating smart contract.

22. The computerized method of claim 13 , wherein a record of an issuance of the security token is recorded on the distributed ledger.

23. The computerized method of claim 13 , wherein a record of the transfer of the security token is committed to the distributed ledger.

24. The computerized method of claim 13 , wherein the request to transfer the security token is a request to transfer the security token from a first address to a second address, wherein the computerized method further comprises:

before the request to transfer the security token is received, determining a split ratio for a new split of security tokens held in at least one address of the distributed ledger without updating token balances on the distributed ledger;

determining a split-updated token balance for at least the first address based on at least an indication of the split ratio; and

wherein the token balances on the distributed ledger are updated for at least the first address based on the split-updated token balance for at least the first address as part of a transaction associated with the transfer of the security token.

Assignments (3)
ASSIGNMENT OF ASSIGNOR'S INTEREST Recorded Dec 6, 2023
From: WARNER, ANDREW
To: TZERO GROUP, INC.
Reel/Frame 065782/0068 →
ASSIGNMENT OF ASSIGNOR'S INTEREST Recorded Dec 6, 2023
From: TZERO GROUP, INC.
To: TZERO IP, LLC
Reel/Frame 065782/0350 →
ASSIGNMENT OF ASSIGNOR'S INTEREST Recorded Dec 6, 2023
From: OVERHOLSER, SCOTT; CHRISTENSEN, ROBERT; SANDERS, NICOLE; WILSON, JUSTIN; VALMASSOI, ROBERT; LESTER, CHASE; SMITH, MICHAEL WILLIAM STUART
To: TZERO GROUP, INC.
Reel/Frame 065791/0753 →
Continuity (6)
Continuation 17546446 · Dec 9, 2021
Continuation 16536940 · Aug 9, 2019
Provisional Application 62881121 · Jul 31, 2019
Provisional Application 62871543 · Jul 8, 2019
Provisional Application 62717575 · Aug 10, 2018
Related Publication 20240095719A1 · Mar 21, 2024
References Cited (105)
US 8140420B2 · Buckwalter · 2012 [cited by applicant]
US 9177313B1 · Silverman · 2015 [cited by applicant]
US 9819670B2 · Bhat et al. · 2017 [cited by applicant]
US 11216802B2 · Overholser et al. · 2022 [cited by applicant]
US 11829997B2 · Overholser et al. · 2023 [cited by applicant]
US 20050131787A1 · Monteleone et al. · 2005 [cited by applicant]
US 20070044143A1 · Zhu et al. · 2007 [cited by applicant]
US 20110022521A1 · Collinge et al. · 2011 [cited by applicant]
US 20120226776A1 · Keebler et al. · 2012 [cited by applicant]
US 20160283941A1 · Andrade · 2016 [cited by applicant]
US 20160321434A1 · McCoy et al. · 2016 [cited by applicant]
US 20170011460A1 · Molinari · 2017 [cited by examiner]
US 20170076382A1 · Dintenfass et al. · 2017 [cited by applicant]
US 20170078094A1 · Olson · 2017 [cited by applicant]
US 20170118095A1 · Konecny · 2017 [cited by applicant]
US 20170223012A1 · Xu et al. · 2017 [cited by applicant]
US 20170330174A1 · DeMarinis et al. · 2017 [cited by applicant]
US 20180117447A1 · Tran et al. · 2018 [cited by applicant]
US 20180240107A1 · Andrade · 2018 [cited by examiner]
US 20180253464A1 · Kohli et al. · 2018 [cited by applicant]
US 20190044714A1 · Parker et al. · 2019 [cited by applicant]
US 20190251629A1 · Gordon, III · 2019 [cited by examiner]
US 20190287107A1 · Gaur et al. · 2019 [cited by applicant]
US 20190287175A1 · Hill et al. · 2019 [cited by applicant]
US 20190303887A1 · Wright et al. · 2019 [cited by applicant]
US 20190325044A1 · Gray · 2019 [cited by applicant]
US 20190333033A1 · Finlow-Bates · 2019 [cited by applicant]
US 20190333051A1 · Brogger · 2019 [cited by examiner]
US 20190349372A1 · Smith · 2019 [cited by examiner]
US 20190377724A1 · Pennington · 2019 [cited by examiner]
US 20200042989A1 · Ramadoss et al. · 2020 [cited by applicant]
US 20200051043A1 · Wilson et al. · 2020 [cited by applicant]
US 20200051069A1 · Wilson et al. · 2020 [cited by applicant]
US 20200051072A1 · Black · 2020 [cited by examiner]
US 20200127833A1 · Konda et al. · 2020 [cited by applicant]
US 20200320222A1 · Zhou · 2020 [cited by examiner]
US 20210082045A1 · Assia et al. · 2021 [cited by applicant]
US 20220101307A1 · Overholser et al. · 2022 [cited by applicant]
CN 105956923A · 2016 [cited by applicant]
JP 2018521437A · 2018 [cited by applicant]
WO 2017145007A1 · 2017 [cited by applicant]
WO 2017145019A1 · 2017 [cited by applicant]
WO 2018065411A1 · 2018 [cited by applicant]
WO 2018127923A1 · 2018 [cited by applicant]
WO 2020033826A1 · 2020 [cited by applicant]
DTC Chills and Freezes, SEC.gov, May 1, 2012, 3 pages (Year: 2012). [cited by examiner]
European Patent Office, “Extended European Search Report”, from EP Application No. 19845961.2, from Foreign Counterpart to U.S. Appl. No. 16/536,866, Apr. 25, 2022, pp. 1 through 6, Published: EP. [cited by applicant]
U.S. Patent and Trademark Office, “Final Office Action”, U.S. Appl. No. 16/536,866, Apr. 19, 2022, pp. 1 through 26, Published: US. [cited by applicant]
Intellectual Property Office of Singapore, “Invitation to Respond to Written Opinion and the Written Opinion”, from SG Application No. 11202100410Y from Foreign Counterpart to U.S. Appl. No. 16/536,866, Oct. 18, 2022, p… [cited by applicant]
Japanese Patent Office, “Notice of Allowance” from JP Application No. 2021-170176, Jan. 4, 2023, from Foreign Counterpart to U.S. Appl. No. 16/536,866, pp. 1 through 3, Published: JP. [cited by applicant]
U.S. Patent and Trademark Office, “Decision on Appeal”, U.S. Appl. No. 16/536,866, Sep. 1, 2023, pp. 1 through 22, Published: US. [cited by applicant]
U.S. Patent and Trademark Office, “Examiner's Answer to Appeal Brief”, U.S. Appl. No. 16/536,866, Mar. 24, 2023, pp. 1 through 11, Published: US. [cited by applicant]
U.S. Patent and Trademark Office, “Notice of Allowance”, U.S. Appl. No. 17/546,446, Jul. 24, 2023, pp. 1 through 34, Published: US. [cited by applicant]
U.S. Patent and Trademark Office, “Notice of Allowance”, U.S. Appl. No. 16/536,866, Dec. 12, 2023, pp. 1 through 32, Published: US. [cited by applicant]
“Gas explosion as NEO not divisible”, NEO, u/investorpatrick, https://www.reddit.com/r/NEO/comments/7qem0f/gas_explosion_as_neo_not_divisible/, 2018 or at least as early as Jun. 13, 2019, pp. 1-4. [cited by applicant]
“GoChain Development Updates—Upgradable Smart Contracts & Development Insights”, GoChain, Dec. 31, 2018, pp. 1-4. [cited by applicant]
“Introduction to Smart Contracts a Simple Smart Contract”, Solidity 0.509 documentation, at least as early as Jun. 17, 2019, pp. 1-11. [cited by applicant]
“List of All Functions”, robin-stocks 1.0.0 documentation, at least as early as Jun. 13, 2019, pp. 1-14. [cited by applicant]
“Trading Glossary”, TradeStation, at least as early as Jun. 13, 2019, pp. 1-29. [cited by applicant]
Araoz, “Proxy Libraries in Solidity”, Zeppelin Blog, Mar. 6, 2017, pp. 1-6. [cited by applicant]
Augustol, “ERC930—Eternal Storage Standard”, ethereum/EIPs, Mar. 14, 2018, pp. 1-7, Issue #930, GitHub. [cited by applicant]
Bayequentist, “Will the total supply of IOTA tokens ever increase?” Iota Beta, Nov. 30, 2017, pp. 1-3. [cited by applicant]
Beers, “Understand the What and Why of Stock Splits”, Stock Trading Strategy & Education, Apr. 25, 2019, pp. 1-8, Investopedia. [cited by applicant]
Chawla, “How to write upgradeable contracts in solidity!”, Apr. 25, 2018, pp. 1-15. [cited by applicant]
Editordavid, “Could Blockchain-Based Fractions of Digitized Stocks Revolutionize Markets”, Slashdot, Mar. 10, 2019, pp. 1-14. [cited by applicant]
Eha, “Capital markets foe seeks an end run via blockchain”, American Banker, Jan. 5, 2018, pp. 1-9. [cited by applicant]
Electronic Code of Federal Regulations (ECFR), “Regulation A—Conditional Small Issues Exemption”, Sections 230.251 through 23.263, Apr. 20, 2015, pp. 1 through 22. [cited by applicant]
Electronic Code of Federal Regulations (ECFR), “Regulation D—Rules Governing the Limited Offer and Sale of Securities Without Registration Under the Securities Act of 1933”, Sections 230.500 through 230.508, Oct. 9, 202… [cited by applicant]
Electronic Code of Federal Regulations (ECFR), “Regulation S—Rules Governing Offers and Sales Made Outside the United States Without Registration Under the Securities Act of 1933”, Sections 230.901 through 230.905, Dec.… [cited by applicant]
European Patent Office, “Extended European Search Report from EP Application No. 19848537.7”, from Foreign Counterpart to U.S. Appl. No. 16/536,940, Mar. 10, 2022, pp. 1 through 10, Published: EP. [cited by applicant]
Ganti, “Reverse Stock Split”, Corporate Finance & Accounting, Apr. 1, 2019, pp. 1-8, Investopedia. [cited by applicant]
Gucluturk, “The DAO Hack Explained: Unfortunate Take-off of Smart Contracts”, at least as early as Jun. 17, 2019, pp. 1-8. [cited by applicant]
Hamlin, “This Week in Blockfolio Signal”, Blockfolio Blog, Apr. 26, 2019, pp. 1-11. [cited by applicant]
Haris, “Upgradable Smart Contracts Made Easy”, Hacker Noon, Oct. 19, 2018, pp. 1-10. [cited by applicant]
Intellectual Property Office of Singapore, “Invitation to Respond to Written Opinion and the Written Opinion”, from SG Application 11202100708W, Oct. 19, 2022, from Foreign Counterpart to U.S. Appl. No. 16/536,940, pp. … [cited by applicant]
International Searching Authority, “International Search Report and Written Opinion from PCT Application No. PCT/US2019/045908”, from Foreign Counterpart to U.S. Appl. No. 16/536,963, Dec. 12, 2019, pp. 1-13, Published:… [cited by applicant]
International Searching Authority, “International Search Report and Written Opinion from PCT Application No. PCT/US2019/045916”, from Foreign Counterpart to U.S. Appl. No. 16/536,866, Dec. 3, 2019, pp. 1-9, Published: W… [cited by applicant]
International Searching Authority, “International Search Report and Written Opinion from PCT Application No. PCT/US2019/045910”, from Foreign Counterpart to U.S. Appl. No. 16/536,940, Dec. 5, 2019, pp. 1-13, Published: … [cited by applicant]
Japanese Patent Office, “Notice of Reason for Rejection from JP Application No. 2021-506681”, from Foreign Counterpart to U.S. Appl. No. 16/536,940, Sep. 10, 2021, pp. 1 through 16, Published: JP. [cited by applicant]
Japanese Patent Office, “Notice of Reason for Rejection” from JP Application No. 2021-506681, from Foreign Counterpart to U.S. Appl. No. 16/536,940, Mar. 2, 2022, pp. 1 through 11, Published: JP. [cited by applicant]
Japanese Patent Office, “Notice of Reason for Rejection”, from JP Application No. 2021-506759, Aug. 25, 2023, from Foreign Counterpart to U.S. Appl. No. 16/536,963, pp. 1 through 4, Published: JP. [cited by applicant]
Nadolinski et al., “Proxy Patterns”, ZeppelinOS Blog, Apr. 19, 2018, pp. 1-16. [cited by applicant]
Omar et al., “Identity Management in IoT Networks Using Blockchain and Smart Contracts”, IEEE Conference on Internet of Things, Green Computing and Communications, Cyber, Physical and Social Computing, Smart Data, Block… [cited by applicant]
Palladino, “Malicious backdoors in Ethereum Proxies”, Nomic Labs, Jun. 1, 2018, pp. 1-8. [cited by applicant]
Petethomas, “Blockchain startup R3 sues competitor Ripple”, Hacker News Sep. 8, 2017, pp. 1-8. [cited by applicant]
Peyrott, “An Introduction to Ethereum and Smart Contracts: a Programmable Blockchain”, Ethereum, Mar. 28, 2017, pp. 1-38, https://auth0.com/blog/an-introduction-to-ethereum-and-smart-contracts-part-2/. [cited by applicant]
Priyanka Ray, “Blockchain Technology”, Fundamentals of Network Planning and Optimisation 2G/3G/4G: Evolution to 5G, 2018, pp. 337-346, John Wiley & Sons Ltd. [cited by applicant]
Reeder, “Upgradeable Smart Contracts are Here!”, GoChain, at least as early as Jun. 17, 2019, pp. 1-5. [cited by applicant]
Reeder, “Upgradeable Smart Contracts”, gochain/gip, Aug. 2, 2018, pp. 1-2, Issue #22, GitHub. [cited by applicant]
Sag, “Delaware General Corporations Law (DGCL) compatible share token”, GitHub, Feb. 14, 2018, pp. 1-6. [cited by applicant]
Saitoh et al.“All about the latest blockchain”, Apr. 15, 2018, pp. 1 through 10. [cited by applicant]
sec.gov, “DTC Chills and Freezes”, May 1, 2012, pp. 1 through 3, sec.gov. [cited by applicant]
Spagnuolo, “Upgradeability using Unstructured Storage”, Technical, Apr. 13, 2018, pp. 1-8, ZeppelinOS Blog. [cited by applicant]
Tanner, “Summary of Ethereum Upgradeable Smart Contract R&D”, Indorse, Mar. 5, 2018, pp. 1-9. [cited by applicant]
U.S. Patent and Trademark Office, “Advisory Action”, U.S. Appl. No. 16/536,866, Jun. 8, 2021, pp. 1 through 4, Published: US. [cited by applicant]
U.S. Patent and Trademark Office, “Final Office Action”, U.S. Appl. No. 16/536,866, Feb. 25, 2021, pp. 1 through 24, Published: US. [cited by applicant]
U.S. Patent and Trademark Office, “Final Office Action”, U.S. Appl. No. 16/536,940, Jun. 7, 2021, pp. 1 through 21, Published: US. [cited by applicant]
U.S. Patent and Trademark Office, “Notice of Allowance”, U.S. Appl. No. 16/536,940, Aug. 24, 2021, pp. 1 through 10, Published: US. [cited by applicant]
U.S. Patent and Trademark Office, “Office Action”, U.S. Appl. No. 16/536,866, Oct. 27, 2020, pp. 1 through 17, Published: US. [cited by applicant]
U.S. Patent and Trademark Office, “Office Action”, U.S. Appl. No. 16/536,866, Nov. 15, 2021, pp. 1 through 24, Published: US. [cited by applicant]
U.S. Patent and Trademark Office, “Office Action”, U.S. Appl. No. 16/536,940, Jan. 14, 2021, pp. 1 through 43, Published: US. [cited by applicant]
U.S. Patent and Trademark Office, “Office Action”, U.S. Appl. No. 16/536,963, May 25, 2021, pp. 1 through 32, Published: US. [cited by applicant]
Vogelsteller, “ERC-20 Token Standard”, Nov. 19, 2015, pp. 1-4, GitHub. [cited by applicant]
Watkins, “Defining and Verifying Accredited Investors: Effect of Potential SEC Changes on North Carolina's Crowdfunding Statute, the NC PACES Act”, North Carolina Banking Institute, Mar. 1, 2017, pp. 1-33, vol. 21, Issu… [cited by applicant]
Japanese Patent Office, “Notice of Reason for Rejection”, from JP Application No. 2022-139652, Nov. 27, 2023, from Foreign Counterpart to U.S. Appl. No. 16/536,940, pp. 1 through 5, Published: JP. [cited by applicant]