Ensuring Patent Claims for AI: US and the Trade Secret


The patent has a lot of value in it. It grants the inventor a monopoly which helps the inventor to commercially exploit the invention and earn the substantial investment being done by the inventor over the invention. The market demands more creative ideas that can make life much easier. The business must develop such an idea or concept that solves a technical problem in an unexpectedly new or better way. If it is making it, then it is highly imperative to take adequate and timely steps to protect its creative idea, concept, or knowledge by converting it into a proprietary technical advantage by patenting it. Patenting is very important since chances are there that the invention gets stolen and the inventor might not be able to get the effective commercial viability out of the invention.


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There come a lot of issues when the inventions are not secured through patenting. These hurdles are faced by various inventors who deal in patent products utilizing Artificial Intelligence.  There cannot be any doubt that Artificial Intelligence has taken the center-stage in a variety of inventions and proved to be an integral part of driving innovation. But ultimately it has also proved to be equally difficult to get into the intellectual property regime. In the US, the Patentable Subject Matter is defined in 35 U.S.C. § 101 as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” This definition provides what are patentable but does not describe the subject matter which is not patentable, but courts have long held that “laws of nature, natural phenomena, and abstract ideas are not patentable.” (Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).

Patent vs. AI

The above-mentioned definition says that abstract ideas are not patentable. The difficulty is when the AI technology is deemed to be an abstract idea as per the patent claims are concerned. The United States Patent and Trademark Office (USPTO) tries to categorize the definition. The thematic approach over this is that if a human mind can accomplish the task, then it is likely to be an abstract idea. Artificial Intelligence attempts to replicate the human mind in an advanced manner thereby patenting it becomes a difficult task since it will fall in the domain of abstract ideas. If it needs to be patented, then the claims must have the inventive concept which can make the AI outside the purview of abstract ideas. In the 2014 case Alice Corp. v. Cls Bank Int’l, the Supreme Court held that merely implementing the abstract idea with a computer does not suffice to become an inventive concept. 573 U.S. 208, 214 (2014).

The technology involved in Artificial Intelligence is moving fast. Even if a specific code might be patentable, or in case copyrightable, such type of protection will be too narrow. Offering a patent to AI might seem to be a distant dream but it can provide a legal monopoly over the said AI, which might benefit the inventor.

Trade Secret

In the US, the Trade Secret Law comes up with the 2016 passage of the Defend Trade Secrets Act (DTSA) which can help in the significant protection of AI technology. The DTSA establishes the federal trade secret law with several features. Some of the features of trade secrets worth mentioning can be the less expensive nature and ensuring flexible subject matter. Moreover, the patent might become obsolete but the trade secret is not affected by the rapid innovation. On the other hand, the trade secret does not have such stringent protection against independent development and it requires efforts to maintain confidentiality.

As mentioned above, that trade secret can have flexible subject matter; the trade secret law can ensure significant protection for AI where the patent protection seems difficult. Featuring far more flexible subject matter provides more room for AI to be fit. As per 18 U.S.C. § 1839(3)(B), the DTSA merely requires that the secret have “actual or potential” value derived from the secrecy. But on the other hand, the disadvantage mentioned above concerning the fact that trade secret does not provide strict protection against independent development and with regards to maintaining the confidentiality can affect the invention and can easily overcome the abstract idea. 

Trade secret requiring that the secret remain non-public primarily shows the weak nature of trade secret. Taking the trade secret route in the US can be beneficial but if the secret is reversed engineered or independently developed, the protection vanishes. It is because of this, that the patents are more sought because the protection exists regardless of independent development or common knowledge that comes into existence after the patent application is filed.

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back Global Patent Filing us at support@globalpatentfiling.com.

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