There has been a flurry of activity in Illinois over the last few months with regards to quantum computing. For example, the state enacted a package of bills that provides tax incentives for quantum computing development, Governor Pritzker unveiled a proposed budget for FY2025 that earmarks $500 million for investment in quantum technology, PsiQuantum announced that it will build a multibillion dollar quantum computing facility in Chicago, and the U.S. Department of Commerce awarded a Chicago-based coalition a $500,000 grant. [1], [2], [3], [4] These developments are truly thrilling and demonstrate an incredibly bright future for Chicago as the new home of quantum computing.

As innovators develop quantum technology that could transform industries ranging from life sciences to telecommunications to agriculture, it is crucial that they consider and prioritize intellectual property strategy. Quantum is obviously a fertile territory for invention, and building a defensible patent portfolio will be critical to eventual commercial success. However, seeking patent protection within the quantum space can be more complex and nuanced than seeking patent protection in other technical fields. Innovators, therefore, need to understand three key challenges and develop sound intellectual property strategies to overcome them.

1. The “abstract idea” barrier

Almost certainly the biggest challenge facing quantum patent applications is subject-matter eligibility. Patents protect inventions, and there are multiple requirements that must be satisfied before the United States Patent and Trademark Office (USPTO) will grant someone a patent. [5] For example, most people probably know that you can’t get a patent on something that isn’t new. Another requirement, though, is that you cannot get a patent on something that is not patent-eligible subject matter. For example, you cannot patent a product of nature (e.g., you cannot patent a new, naturally occurring species of turtle simply because you were the first one to discover the turtle) or a law of nature (e.g., you cannot patent gravity, even if you newly discovered it).

Of most relevance for quantum technology, though, is that you cannot get a patent on anything that falls into a broad category of technologies classified as “abstract ideas.” This prohibition was cemented by the U.S. Supreme Court in the famous Alice case from 2014. [6] Since 2014, the exclusion of “abstract ideas” from patent protection has been the bane of countless software inventions. In the case of quantum technologies, this barrier makes it significantly more challenging to obtain a patent on purely algorithmic inventions, such as quantum computing algorithms that can be described in purely mathematical terms.

This isn’t a death knell to all quantum-related inventions, though. Inventions related to physical components of quantum computers (e.g., involving atoms, lasers, optics, cooling devices, etc.) would likely not be considered “abstract ideas.” Further, if you can tether a quantum computing algorithm directly to the device performing the algorithm, your chances of success in obtaining a patent would increase.

2. Collaboration and joint ownership

While the recent surge in funding for quantum computing research is a blessing for innovators, it can also prove to be a minefield when it comes to considerations of who owns the underlying patent rights.

There are two particularly sticky situations that come to mind when considering quantum patents. The first is that large amounts of funding (especially in these nascent days of quantum computing) is coming from the federal government. When the U.S. government funds the development of an invention, it retains some rights to the invention. This can (and should) impact whether innovators will want to accept federal funding.

The second situation occurs when multiple different entities are funding the research and development efforts (e.g., under a “joint research agreement”). Such a situation raises questions regarding who owns any resulting patent, whether there are restrictions on selling and/or transferring the resulting patent to third parties, who is paying for the costs associated with obtaining the patent, etc.

3. Buying time

One additional consideration for quantum innovators is time horizon. Issued patents last for 20 years from the filing date of the patent application. However, the costs associated with the patent process are somewhat frontloaded (e.g., there is typically a significant upfront investment in preparing the patent application, filing the patent application, and going back-and-forth with the USPTO before obtaining a patent). Further, given the nature of quantum technology, it may be many years before the invention in question would ultimately find its way into a marketable product. As a result, it can be difficult for investors to make relatively expensive upfront decisions without much (or any) knowledge of the ultimate market for an eventual product.

There are some techniques that can be used to defer the costs of the patent application process, though (e.g., to give the invention and/or the market more time to mature). For example, rather than initially filing a typical non-provisional patent application with the USPTO (which may be examined by a patent examiner in 12-18 months), you could file a provisional patent application. This gives you an extra year before you have to file a non-provisional patent application (thereby effectively delaying some of the USPTO and attorney costs by a year). Alternatively, rather than a typical non-provisional application, you could file an international application that acts as a worldwide placeholder. With an international application (sometimes colloquially referred to as a “PCT application,” after the treaty that created it), you have 30 additional months to file any follow-up applications. These tactics can be valuable when it is simultaneously important to (i) get an application on file to prevent being scooped by a competitor and (ii) defer expenses as much as possible with a nascent technology.

There is justifiably much excitement surrounding the quantum computing boom in Chicago. It is important, though, that innovators remember to prioritize intellectual property strategy when developing these new quantum technologies. [7] Best of luck to all the quantum engineers and scientists as you lead us into this bold new frontier.

[1] https://www.mbhb.com/intelligence/snippets/illinois-passes-act-further-incentivizing-quantum-industry/

[2] https://www.businesswire.com/news/home/20240222542467/en/Governor-JB-Pritzker-Announces-Historic-500-Million-Investment-Aligning-with-the-CHIPS-and-Science-Act

[3] https://chicago.suntimes.com/technology/2024/07/25/psiquantum-steel-south-works-quantum-computer-johnson-darpa

[4] https://chicagoquantum.org/news/bloch-quantum-tech-hub-awarded-500000-economic-development-administration

[5] The primary requires are spelled out in the patent statute at 35 U.S.C. §§ 101, 102, 103, and 112

[6] https://en.wikipedia.org/wiki/Alice_Corp._v._CLS_Bank_International. I find it somewhat ironic and mildly humorous that the “Alice” case presents a non-negligible hurdle for quantum computing inventions, when “Alice and Bob” are so frequently used as example users in quantum computing examples.

[7] For a more in-depth discussion, feel free to check out my two-part piece from Inside Quantum Technology from last year – https://www.insidequantumtechnology.com/news-archive/how-to-develop-a-strong-quantum-patent-portfolio-part-1/; https://www.insidequantumtechnology.com/news-archive/how-to-develop-a-strong-quantum-patent-portfolio-part-2/

[View source.]