Document Type

Article

Journal Title

Harvard Journal of Sports & Entertainment Law

Volume

16

First Page

150

Publication Date

Winter 2025

Abstract

Seeking a patent requires surrendering trade secrets. The decision whether to seek patent protection or maintain a trade secret is a pivotal one for innovators. A critical impediment to a rational decision lies in uncertainty as to whether a patent will be granted once the trade secret has been surrendered, and a particular source of uncertainty arises because of the unpredictability of the application of the “obviousness” standard for patentability. This Article explores the history and application of obviousness determinations and proposes the use of artificial intelligence to increase objectivity and predictability into this critical phase of patent prosecution. After outlining the relationship between trade secrets and patents, and the history and challenges of determining obviousness, it proposes using AI tools to reduce subjectivity (and, in particular, hindsight bias), speed patent prosecution, and thereby reduce the uncertainty of the trade secret/patent decisionmaking process. It also demonstrates the feasibility of applying AI through an experiment. Finally, it addresses potential legal and ethical issues associated with AI’s role in patent examination and outlines the requirements for integrating an AI system into the patent prosecution process.

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