Apr 22, 2024

Say Less to Say More: Invention Disclosures and The Importance of Secrets

The evolution of 35 U.S.C. 101, as interpreted by the landmark Alice Corp. vs. CLS Bank International decision and subsequent caselaw, has significantly impacted the need for detailed invention disclosures and underscored the importance of trade secret protections in developing specific technologies, particularly within AI advancements.

Say Less to Say More: Invention Disclosures and The Importance of Secrets

The legal landscape of intellectual property (IP), particularly patents, has seen significant changes in the past decade, especially with the pivotal Supreme Court case of Alice Corp. v. CLS Bank International (2014). This ruling and its progeny have reshaped how patents—especially those related to software and abstract ideas—are evaluated under 35 U.S.C. § 101. As the law stands, understanding the nuances of these changes is crucial for innovators, especially those in the rapidly evolving field of artificial intelligence (AI). This blog post delves into the implications of the Alice decision on patent filings, the increased need for thorough invention disclosures, and why trade secret protections have become more pivotal than ever for safeguarding intellectual property.

The Alice decision set a precedent in patent law by introducing a two-part test to determine the eligibility of inventions under § 101. This test scrutinizes whether a patent claim is directed to a patent-ineligible concept, such as an abstract idea, and if so, whether it contains an "inventive concept" sufficient to transform the claim into a patent-eligible application. The ruling has heightened the scrutiny on software and business method patents, prompting inventors and attorneys to navigate a more complex terrain towards securing patent protection.

As the evolving case law is teaching us, the how and the why of an invention are increasingly critical questions that need to be answered by the patent application. That is, particularly in the context of inventions related to AI, a claim is more likely to be found patentable if it answers questions like "How does the invention achieve the objective for which it is designed?" and "Why is the technology behind the invention important to achieving that objective?". As Dennis Crouch emphasizes in his April 21, 2024 Patently-0 Post, AI Visualize and the Eligibility of Innovative AI Systems, "the key for eligibility is to expressly claim how the technology works, rather than just its function or objective," Dennis Crouch, AI Visualize and the Eligibility of Innovative AI Systems, patentlyo.com, April 21, 2024 (explaining that he has "heard from patent attorneys that they are  more than ever sending invention disclosures back to the inventors for more development until the technological improvement becomes apparent").

In today's intellectual property environment, merely describing an invention's high-level functionality or its end result is not sufficient. Inventors and their legal teams are now tasked with meticulously articulating the technical problem and the specific, innovative solution their invention provides, emphasizing the technical improvements and novel application to surpass the thresholds set by the case law. This enhanced level of detail helps establish the invention's eligibility by demonstrating its inventive concept, moving beyond mere abstract ideas to patentable applications. Consequently, thorough invention disclosures can significantly bolster the strength of a patent application, making it more resilient against § 101 rejections.

Not surprisingly, the increased importance of thorough invention disclosure often leads to a longer time between conception of an invention and the filing of a patent application claiming that invention. These delays can bring with them a myriad hazards such as the risk of competition winning the race to the patent office and/or an increased opportunity for leaks or thefts of the component ideas of the invention, among others. To mitigate these risks, trade secret protection should not be overlooked as a vital component of a robust intellectual property strategy.

Trade secret protection offers many advantages, especially for technology that involves proprietary algorithms, data models, and processes that are not readily ascertainable by others and that may not yet be ripe for inclusion in a patent application. Trade secret protection does not require registration and has no expiration date, but it is contingent on the ability of the holder to maintain the secrecy of the protected information. In the realm of AI, where extremely rapid innovation is the norm, the ability to protect critical aspects of a technology as a trade secret, while developing invention disclosures more suitable for pursuing patents, is an essential tool in the toolbox of both the modern IP law practitioner and the innovator.

For those navigating the complexities of intellectual property in the aftermath of Alice, the guidance of experienced counsel can prove invaluable. We invite you to ask a question using the "Ask a Question" button at the top of the page, or continue this conversation by clicking the contact button. Our team is here to help you develop and protect your intellectual property with forward-thinking strategies designed for success in today's and tomorrow's technological landscapes.

Tags: Alice, 35 U.S.C. § 101, patentability, subject matter eligibility, intellectual property, invention disclosures, trade secret protection, AI patents, software patents

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