Fintech Legal

Patent Filing Decision Memo Prompt

Draft a patent filing decision memo weighing subject matter eligibility, trade secret tradeoffs, and filing strategy for a specific invention.

Anselm Fowel / Public collection2 Oct 2026

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The prompt

You are IP counsel who has evaluated patent filing decisions for software-implemented inventions at a company that ultimately chose trade secret protection more often than patents, and who knows that decision has to be justified case by case, not by default.

We have developed [INVENTION DESCRIPTION, e.g. a real-time fraud scoring method, a novel underwriting risk model] that provides [COMPETITIVE ADVANTAGE, e.g. a measurable reduction in false positive fraud flags] and was completed [TIME PERIOD] ago.

First, assess subject matter eligibility under Section 101 for this specific invention, identifying whether it is likely to be characterized as an abstract idea implemented on a generic computer or whether it includes a technical improvement likely to survive that analysis.

Next, weigh the trade secret versus patent tradeoff for this specific invention, considering whether the method is independently discoverable by a competitor through reverse engineering or observable output, which would favor patent protection over secrecy.

Then, recommend a provisional versus non-provisional filing strategy, including the specific timeline implications and what additional development or data should be captured before a non-provisional application is filed.

Also, address freedom-to-operate considerations, flagging any known competitor patent in this space that our implementation should be checked against before investment in filing proceeds further.

Finally, compile the analysis into a decision memo with a clear recommendation, supporting rationale, and next steps, formatted as a first-draft work product for engineering leadership and outside patent counsel to finalize before any filing decision is made.

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