By: Oleg K. Salakhov, Partner, Berkeley Law & Technology Group, LLP

This article is Part Two of a series of articles on the intersection of Quantum Computing and Law

Part One introduced quantum computing’s defining technical concepts and the strategic priority governments, companies, and investors are placing on the technology. This installment focuses on the distinction between quantum mechanics and quantum computing, and why that distinction carries direct legal consequences, then walks through three practice areas where it matters most: patent prosecution, cryptographic liability, and cross-border regulatory compliance.

These are not future concerns. They are quietly arising in your client files right now.

The distinction itself is worth pausing on, because conflating the two fields is a surprisingly common source of strategic error. Quantum mechanics is in the domain of physics – a theory developed in the early twentieth century to explain the behavior of matter and energy at the atomic scale. It is a theoretical description of how nature works at that level. Quantum computing is in the domain of engineering – a technology built on top of quantum mechanics in order to exploit its strange properties for computation. For IP practitioners, that distinction has a direct and immediate legal consequence: quantum mechanics, as a description of the laws of nature, is excluded from patent eligibility. Quantum computing applications, if properly framed, are not. As such, the art of quantum patent prosecution turns on knowing where that line falls and keeping your claims on the legal side of it.

The Origin Story IP Practitioners Should Know

That history has a direct bearing on patent eligibility and understanding it is the first step to avoiding a § 101 rejection. Quantum computing did not emerge from abstract curiosity. It was born from a very specific frustration: classical computers were profoundly ineffective at simulating quantum systems. By the 1980s, physicists attempting to model molecular and chemical interactions on conventional hardware kept hitting an exponential wall – the number of variables required to describe even modest quantum systems outpaced what any classical machine could handle. In a celebrated 1981 MIT lecture, Richard Feynman articulated the solution with characteristic simplicity and bluntness: if the problem is that nature runs on quantum rules, then build a machine that also runs on quantum rules.

That framing matters to IP practitioners for a reason that goes beyond history. It means that every advance in quantum computing is, at its core, an application of quantum mechanical principles, better control of quantum states, more reliable qubits, lower error rates. Each such advance is potentially patentable subject matter, but many of us are wary of undertaking such cases since our understanding where the line between quantum “law of nature” and “specific technical application of a law of nature” falls can be blurry to reliably draft claims that survive examination.

Patent Prosecution: The § 101 Gauntlet and How to Navigate It

As noted in Part One, the patent race in quantum computing is already underway at scale. IBM secured 191 quantum patents in 2024 alone; Google followed with 168. The remaining field, startups, universities, and national laboratories, collectively accounted for fewer than 50. So, for smaller clients who are not filing aggressively, the window to establish foundational IP positions is closing faster than most appreciate.

The central obstacle is patent eligibility under 35 U.S.C. § 101 and the Supreme Court’s Alice Corp. v. CLS Bank International (2014) framework. Because quantum algorithms are mathematical operations at their core, examiners routinely reject them as abstract ideas – the same category that invalidated thousands of software patents in the years following Alice. The § 101 analysis asks whether a claim is directed to a law of nature, natural phenomenon, or abstract idea, and if so, whether it adds “significantly more” to transform it into a patent-eligible application. In quantum computing, this is where the mechanics-versus-computing distinction does its most important legal work: a claim that reads as a description of quantum physical principles will most likely fail; a claim anchored in a specific quantum hardware implementation with a measurable technical effect will most likely succeed.

The winning approach – confirmed by the PTAB’s instructive February 2025 decision in Ex parte YUDONG CAO (Appeal 2024-002159, Application 16/591,239) is to anchor claims in the physical characteristics of the quantum system. In Cao, the Board reversed an examiner’s § 101 rejection of a hybrid quantum-classical computing method, finding that the claims described a concrete technical improvement to the way a quantum circuit operates on noisy, limited-depth hardware – not merely an abstract algorithm.

The practical takeaway from Cao: frame claims in terms of a measurable technical effect tied to quantum physics and physical device behavior, such as improved qubit fidelity, reduced decoherence, enhanced error correction, rather than computational logic alone. That framing is frequently the difference between a granted patent and never-ending rejections.

Enablement can be another major prosecution issue. The PTAB has sustained enablement rejections in multiple quantum-related appeals where specifications disclosed a narrow set of working examples, but claims swept broadly across an entire genus of techniques or materials. Given how rapidly the field is evolving, IP practitioners should treat over-disclosure as standard practice: multiple diverse working examples, a contemporaneous assessment of the level of ordinary skill in the art, and claim sets that are graduated in scope. A dependent claim that survives is worth considerably more than a broad independent claim that does not.

Where potential § 101 risk is unacceptable for a client – particularly for new quantum algorithms that patent examiners tend to find difficult to grasp in order to distinguish from abstract mathematical methods regardless of how they are framed, trade secret protection deserves serious consideration as an alternative or complementary option. Unlike a patent, a trade secret requires no public disclosure, does not expire after twenty years, and is not subject to the Alice/Mayo eligibility analysis. The tradeoff is that trade secrets provide no protection against independent development or reverse engineering, a meaningful vulnerability in a field where multiple well-funded teams are working on similar problems simultaneously. For algorithms embedded in proprietary hardware architectures, a layered strategy – patent the hardware, protect the algorithm as a trade secret – often provides the strongest aggregate position.

IP practitioners should also consider Bayh-Dole Act implications for clients receiving federal funding, which is pervasive in quantum research. Government funding can trigger retained rights that affect a company’s freedom to commercialize its own inventions. Joint development arrangements require careful drafting to allocate IP ownership, prosecution costs, and licensing rights before work begins – not after a dispute has arisen about who owns a quantum breakthrough.

Cryptographic Risk: A Liability Issue, Not a Technology Question

In reality, the most pressing near-term legal risk quantum computing poses has nothing to do with patents. It is the threat to encryption. The standard protocols that protect financial transactions, privileged communications, M&A data rooms, and confidential client files, like RSA and elliptic-curve cryptography, among others, rely on mathematical problems that a sufficiently powerful quantum computer could solve exponentially faster than any classical machine. 

The threat operates on two timelines. The first is the obvious one: once quantum computers reach sufficient scale and reliability, they will be able to break current encryption directly. The second, and more immediately actionable, is the harvest-now, decrypt-later attack: sophisticated actors, including state-sponsored programs, are believed to be intercepting and archiving encrypted data today with the intention of decrypting it once quantum capability matures. M&A term sheets, trade secrets, attorney-client communications, and proprietary research transmitted over standard encrypted channels are potentially compromised retroactively. The day this becomes feasible is referred to in the security community as Q-Day. Expert estimates of the timeline vary, but the range most often cited has narrowed considerably in the past years.

The National Institute of Standards and Technology (NIST) released its first finalized post-quantum cryptography (PQC) standards in August 2024, FIPS 203, 204, and 205, providing the first government-approved roadmap for quantum-resistant encryption. Congress enacted the Quantum Computing Cybersecurity Preparedness Act in 2022, establishing mandatory migration timelines for federal agencies. The UK’s National Cyber Security Centre published a three-phase migration roadmap in March 2025, requiring organizations to identify all cryptographic dependencies by 2028 and complete full migration by 2035. 

What these regulatory developments collectively signal is that the “we’ll deal with it later” posture many clients take is no longer legally defensible. Prior to the NIST standards, an argument could be made that post-quantum migration was aspirational. That argument is no longer available. An organization that was on notice of the harvest-now threat and chose not to migrate to NIST-aligned cryptographic standards could face negligence liability for a breach that occurs after Q-Day, even if the underlying data was intercepted years earlier. The legal compliance window, and potential malpractice claims, now have a hard edge.

For IP counsel, this translates into concrete near-term actions. Commercial agreements, particularly service agreements, vendor contracts, and data processing arrangements with terms of five years or more, should be reviewed and updated to require NIST-aligned PQC standards. Due diligence in technology transactions and M&A should now include an assessment of the target’s cryptographic infrastructure and any IP or confidential data stored or transmitted using vulnerable or non-compliant protocols. And board-level governance for your clients should be briefed accordingly: quantum cryptographic risk is fast becoming a fiduciary issue, not a technical footnote.

Cross-Border Transactions: Export Controls and the Geopolitical Dimension

As noted in Part One, the quantum computing race is geopolitical. The United States, China, the European Union, and others are treating quantum technology as a matter of national security, not merely commercial competition. For attorneys advising on cross-border transactions, licensing arrangements, or joint development agreements involving quantum IP, that geopolitical reality has a direct legal manifestation: export controls are expanding to reach quantum and related technologies.

Quantum processors, specialized cryogenic components, and certain quantum cryptographic systems are increasingly being classified as dual-use technologies under the Export Administration Regulations (EAR), akin to the treatment of advanced semiconductors following the 2022 export control expansion. Counsel involved in international quantum IP transactions should assess whether proposed transfers of IP, underlying technology, and know-how are subject to EAR licensing requirements, and should build that analysis into transaction timelines, which can be materially extended by the licensing process.

Joint development agreements with non-U.S. parties introduce additional complexity. Fundamental research exemptions under the EAR may offer some protection, but the line between basic research and applied development is rarely clean in a commercial quantum program. Foreign investment screening under CFIUS is also a live issue for quantum companies receiving foreign capital: quantum computing has been explicitly identified as an emerging technology warranting CFIUS review, and the CFIUS Committee has grown considerably more aggressive in technology sectors with national security implications.

Practical Guidance for IP Counsel

Patent Prosecution:

• Frame claims in physical terms. Claims framed around hardware performance metrics, qubit fidelity, error correction rates, circuit depth efficiency, survive § 101 scrutiny far better than those framed around computational steps. Examiners treat the latter as abstract mathematical algorithms; the former as concrete technical improvements to a physical system.
• Cite Ex parte Cao proactively. In prosecution where the examiner characterizes hybrid quantum-classical claims as abstract, the PTAB’s February 2025 decision provides helpful guidance that should be placed in the record.
• Conduct cross-disciplinary prior art searches. Prior art in quantum computing spans physics, computer science, and electrical engineering literature. Standard keyword searches may be insufficient.
• Consider layered IP strategies. For clients with both quantum hardware and novel algorithm assets, consider patenting the hardware architecture while maintaining algorithms as trade secrets to avoid § 101 exposure.

Client Counseling: Cryptographic Risk

• Conduct a cryptographic dependency audit. Advise clients to inventory all systems, contracts, and stored data relying on RSA or elliptic-curve cryptography. Without that map, there is no migration plan – and without a migration plan, there is no defensible response to a post-Q-Day breach claim.
• Update commercial agreements now. Add provisions requiring NIST-aligned PQC compliance by vendors and suppliers. Any agreement with a term of five or more years that handles sensitive data now runs a meaningful risk of spanning Q-Day, making PQC migration a contract term, not just a technology choice.
• Brief the board. The NIST standards and the NCSC roadmap have moved PQC migration from “best practice” to a legally cognizable duty of care. Directors who were briefed and deferred action face a materially different exposure profile than those who were never informed. Counsel should create that record now.
• Assess M&A targets for quantum exposure. Due diligence should now include an assessment of the target’s cryptographic infrastructure and any IP stored or transmitted using potentially vulnerable encryption.

Monitoring the Evolving Landscape

Quantum-related legal field is rapidly evolving, but with a few controlling precedents to date. Counsel should monitor PTAB decisions in the quantum space, USPTO guidance updates (note that the August 2025 § 101 memo materially affects the eligibility analysis for AI and software claims in ways that can be directly relevant to quantum applications), and NIST’s ongoing PQC standardization process. The first wave of quantum patent litigation is anticipated in the near future, as the technology matures and the current patent portfolios become monetizable.

Looking Ahead

Quantum mechanics gave the world a new description of physical reality. Quantum computing is now engineering that description into machines with genuinely disruptive potential – for clients’ businesses, for cryptographic infrastructure, and for the IP law practice itself. The patent landscape is already being contested. The cryptographic threat is already operational, if not yet fully actualized. The regulatory framework is actively developing.

IP counsel who understand the technical distinction between quantum mechanics (the science) and quantum computing (the application) – and who can successfully translate that distinction into prosecution strategy, contract language, and client risk advice – are positioned to add significant value to their clients as this technology transitions from R&D labs to courtroom.