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Ahmed Elmallah

Intellectual Property Lawyer at Bennett Jones Edmonton

Counsel, Patent Agent, Trademark Agent

Edward (Ted) Yoo

Intellectual Property Lawyer and Canada/US Patent and Trademark Agent at Bennett Jones Edmonton

Partner, Patent Agent, Trademark Agent

Lorelei Graham

Food and Agribusiness Lawyer, IP Lawyer, Litigation Lawyer at Bennett Jones Toronto

Partner

How an AI system is commercialized and deployed also affects whether patent protection is appropriate. In many cases, the degree of control retained by the provider over the deployed system acts as a counterweight to other considerations that might otherwise favor trade secret protection.

AI Patents A Corporate Decision Tool IV

The Business Delivery Model

AI: Is Patenting Really the Right Move? - Factor IV

This article forms one part of a broader decision framework for evaluating whether patent or trade secret protection is appropriate for AI innovation.&nbsp;The framework is designed to help decision-makers (e.g., innovaters, in house, CTOs) align patent and IP strategy with underlying business realities and moving beyond purely "legal" considerations.&nbsp;
Within that framework, this article addresses a second decision factor: what is the realistic patent scope for the AI innovation?&nbsp;An AI patent with meaningful scope can block competitors from implementing commercially viable alternatives. Assessing enforceable scope therefore requires focusing on some of the following factors: (a) competitor blocking potential; (b) detectability of infringement; and (c) divided infringement.

AI Patents A Corporate Decision Tool II

The Enforceable Patent Scope

AI: Is Patenting Really the Right Move? - Factor II

Defensive blocking considers whether a patent can prevent others from patenting or controlling adjacent technical or commercial space. It matters for two main reasons: (i) to stop competitors from obtaining patents that could later restrict your ability to operate, and (ii) to provide leverage for counter-assertion if a competitor brings a patent claim against you.

AI Patents A Corporate Decision Tool VI

Competitor Defensive Positioning

AI: Is Patenting Really the Right Move? - Factor VI

Finally, and most importantly, patentable potential addresses whether the innovation is likely to satisfy the main requirements for patentability: novelty, non-obviousness and subject-matter requirements. This assessment is highly fact-specific and depends on the prior art landscape and how the invention is framed. Early analysis helps determine whether patent protection is realistic and worth pursuing.

AI Patents A Corporate Decision Tool VII

Patentability Potential & Layered Strategies

AI: Is Patenting Really the Right Move? - Factor VII

This article forms one part of a broader decision framework for evaluating whether patent or trade secret protection is appropriate for AI innovation. The framework is designed to help decision-makers (e.g., innovators, in house, CTOs) align patent and IP strategy with underlying business realities and moving beyond purely "legal" considerations.&nbsp;Reproducibility considers whether a competitor could realistically replicate the innovation by reviewing your public materials or otherwise by obtaining limited access to the system itself.

Sébastien Gittens Profiled in The Calgary Law Review

From the Same Authors

AI: Is Patenting Really the Right Move? - Factor IV

AI: Is Patenting Really the Right Move? - Factor II

AI: Is Patenting Really the Right Move? - Factor VI

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AI: Is Patenting Really the Right Move? - Factor IV

AI: Is Patenting Really the Right Move? - Factor II

AI: Is Patenting Really the Right Move? - Factor VI

AI: Is Patenting Really the Right Move? - Factor VII

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