IP protection strategies for AI: keep them secret or go for the patent?

Perhaps the most consequential decision in seeking IP protection over AI-powered services and products is whether to pursue patent or trade secret protection. What is the best approach to protect your cutting-edge innovation? This webinar first provides background on the different forms of IP protection available for AI and addresses federal policy in the United States on maintaining US leadership in AI. We will describe how the United States Patent and Trademark Office and the federal courts are uniquely primed to recognise and strengthen patent and trade secret protection for AI in the United States, but that uncertainty remains with respect to protecting the data that powers many AI services. We will then address a number of factors specific to AI-powered services and products to help guide the decision as to whether to pursue patent or trade secret protection, including:

• patentability;
• patent eligibility;
• secrecy;
• inventorship;
• technology transfer;
• the competitive landscape;
• cost; and
• legal remedies.

We conclude with a checklist and takeaways for consideration, including how a diverse IP strategy focused on both patent and trade secret protection may be the winning solution for AI-powered services and products.       

Speakers

Martin M Zoltick
Partner
Rothwell Figg

Martin M Zoltick has been practising in the field of technology law for more than 30 years. Marty’s practice is focused primarily on IP matters, transactions, privacy, data protection and cybersecurity. With a background as a software developer and engineer, Marty assists inventors, innovators, entrepreneurs and investors with their most complex technologies, including AI, Big Data, the Internet of Things and machine learning. He is a registered patent attorney and a substantial part of his practice involves drafting and prosecuting patent applications and developing with his clients IP strategic plans designed to maximise value and satisfy both legal and business objectives. In addition, Marty has significant experience handling contested cases and disputes on behalf of his clients. A Certified Information Privacy Professional in the United States (CIPP/US), he also helps clients to understand and navigate the rapidly evolving area of privacy and data protection law.

Jennifer B Maisel
Partner
Rothwell Figg

An emerging thought leader on the intersection of AI and the law, Jennifer B Maisel focuses on IP and privacy law issues involving cutting-edge technology. Her practice encompasses all aspects of IP law, including litigation, patent prosecution, transactions, opinions and counselling. Jen is also a CIPP/US and counsels clients on privacy and data security matters. She serves a diverse range of clients – from solo inventors and start-ups to Fortune 100 companies – in matters concerning AI and machine learning, telecoms systems, the Internet of Things, Big Data technologies, mobile and website applications and other digital technology. She has been selected to the Washington, DC Super Lawyers ‘Rising Star’ list (2018-2020) and is included in the inaugural edition of Best Lawyers: Ones to Watch (2021), which recognises extraordinary lawyers who have been in private practice for less than 10 years.