Broadcast Date: Monday, December 14, 2020
from 12:00 pm to 1:30 pm (ET)


Today’s modern organizations are heavily investing in artificial intelligence (AI) to remain competitive and relevant. However, along with the significant opportunities offered by AI-related inventions, is the challenge of effectively protecting intellectual property (IP) in this space. Seeing patents as a difficult path to take, businesses are now looking toward trade secret protection.

While a trade secret can provide several advantages – such as broad subject-matter eligibility – it also has many drawbacks. Companies and their lawyers must be conversant with the implications of keeping AI as a trade secret to ensure that potential risks are mitigated.

In this LIVE Webcast, a panel of thought leaders and professionals brought together by The Knowledge Group will present to the audience a comprehensive guide on utilizing trade secrets to protect AI-related IP. Speakers will also provide practical tips and best practices in maximizing trade secret protection while avoiding missteps.

Some of the major topics that will be covered in this course are:

  • AI and Trade Secret Protection
  • Trade Secrets vs. Other IP Rights
  • Opportunities and Challenges
  • Practical Tips and Best Practices
  • Outlook

Learning Objectives

  • Determine the key issues in implementing an effective IP strategy for AI systems
  • Identify best practices for protecting trade secrets and minimizing risks of trade secret claims
  • Recognize the various considerations when selecting the best strategy – trade secret or patent – to protect AI-based inventions


Course Level:



Advance Preparation:

Print and review course materials


Method of :

On-demand Webcast (CLE); Group-Internet Based



General knowledge of trade secrets law


Course Code:



NY Category of CLE Credit:

Areas of Professional Practice


NASBA Field of Study:

Information Technology – Technical


Total Credits:

1.5 CLE

1.5 CPE (Not eligible for QAS (On-demand) CPE credits)

Speaker Panel:

Richard F. Martinelli, Partner
Orrick, Herrington & Sutcliffe LLP

Rich Martinelli, co-leader of Orrick’s Artificial Intelligence Practice and member of Orrick’s Intellectual Property Practice, has 20 years of experience litigating and counseling clients on the most challenging IP issues. Rich has a degree in electrical engineering and he has become increasingly focused on AI litigation and counseling. Rich has advised clients on a variety AI related issues, and he has developed IP strategies for AI clients balancing, patent, copyright, contractual data ownership and trade secrets. In addition to his AI experience, Rich’s patent work has involved a wide range of technologies including image processing, 3d graphics, audio / video compression, computer hardware and software, e-commerce, network technologies, digital rights management and encryption. He is a registered patent attorney with the U.S. Patent Trial Office and has counseled clients and rendered opinions on patent validity, infringement and freedom to use.

Teena-Ann V. Sankoorikal , Partner
Covington & Burling LLP

Teena Sankoorikal is a commercial litigator who has handled many high-profile, complex civil litigation and intellectual property disputes, including business torts, breach of contract, fraud, patent, trade secret, and copyright matters. In particular, she has advised multinational technology companies on a variety of business tort-related issues, ranging from fraudulent misrepresentation, to tortious interference, to unfair competition, among others. Ms. Sankoorikal has advised companies on allegations of theft of trade secret information by former employees, board members, competitors, and business venture partners. She has represented technology companies in a variety of patent litigation matters, principally relating to high-tech patents. She has advised multinational companies on copyright issues relating to the alleged copying of software, relating to the illegal transmission of music via peer-to-peer file sharing software, and relating to the copying of confidential manuals. Among other companies, Ms. Sankoorikal has advised AB InBev,, American Outdoor Brands, GE, IBM, Lilly, McKesson, Qualcomm, Time Warner, UCB, Vivendi, and Warner Brothers Records.

Joseph J. Probst , Principal
Dority & Manning, P.A.

Joseph is a Principal for Dority & Manning P.A., a boutique intellectual property law firm.  Joseph focuses his practice on patent prosecution and portfolio management for clients within software industries, specifically AI and Machine Learning.  Joseph partners with his clients to develop targeted, innovative, and effective strategies that advance the company’s goals and commercial agenda, whether an early stage startup or Fortune 500 company.

Joseph often shares his insights and expertise regarding progressive technologies and intellectual property, and recently participated in an Artificial Intelligence seminar in Tokyo for Japanese in-house counsel.



Richard F. MartinelliPartner

Orrick, Herrington & Sutcliffe LLP

  • Your IP strategy for AI systems goes hand-in-hand with your AI deployment strategy.
    • Different consideration arise when protecting internal AI models that are never exposed to the public versus SAAS systems or APIs that provide third parties access your AI system, or IoT devices with embedded AI intelligence sold to consumers.
  • Will trade secrets provide sufficient barriers to entry
    • Can competitors recreate you system? Do they have the data necessary? Do they have the AI talent necessary?
  • Is your trade secret strategy really a contract strategy?
    • Who has access to your secret information? If it is partners or customers, your contracts will be critical?
  • Does your exclusive access to trade secret data create competition issues?
    • Will the law evolve to treat data as an essential facility?


Teena-Ann V. SankoorikalPartner

Covington & Burling LLP

  • Protection of trade secrets
  • Minimizing potential for theft of trade secrets
  • Trade secret considerations in remote work environments
  • Minimizing risks of trade secret claims


Joseph J. ProbstPrincipal

Dority & Manning, P.A.

Balancing Patent and Trade Secret Protection for AI-Based Inventions

Practical legal advice primarily directed to in-house patent counsel on how to balance patent and trade secret protection for AI-based inventions. The presentation will walk through a “decision tree” that can be used to determine whether to file a patent on the invention or to attempt to maintain the invention as a trade secret.

  • Core aspects of an AI-Invention (e.g., training data selection, data pre-processing, training scheme, model architecture, use of model outputs).
  • Initial considerations for patent vs. trade secret:
    • Past or future public disclosures:
      • Academic paper publication
      • Open sourcing
    • Detectability
  • Reasons to file a patent when public disclosure has or will occur, even if the invention is not detectable.
    • Open source license details
    • Innovation chains in the open innovation ecosystem
  • When invention will not be publicly disclosed and is not detectable, trade secret is likely a superior strategy.
    • However, other practical considerations may still prompt a patent filing (e.g., portfolio growth for driving investment)
  • Even when filing a patent is advisable, counsel may seek to balance disclosure requirements with trade secret protection.
    • Certain aspects which provide optimal performance but are not part of the claimed invention may be treated as trade secret.
      • Sources of data
      • Pre-processing or data cleaning schemes
      • Hyperparameters
    • However, must take care to satisfy section 112 requirements.
      • Enablement
      • Best Mode

Date & Time:

Monday, December 14, 2020

12:00 pm to 1:30 pm (ET)

Who Should Attend:

  • Trade Secret Lawyers and Consultants
  • IP Lawyers and Consultants
  • Corporate Lawyers
  • Human Resource Personnel
  • In-house Counsel
  • Top-Level Executives


Richard F. MartinelliPartner
Orrick, Herrington & Sutcliffe LLP
Teena-Ann V. Sankoorikal Partner
Covington & Burling LLP
Joseph J. Probst Principal
Dority & Manning, P.A.



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