Disclaimer: I am not a lawyer. I am not your lawyer. This is not legal advice.

In the United States, the only patentable subject matter is processes, machines, manufactures, or compositions of matter [1]. Anything outside of those areas is not directly patentable. Some subject matter like mathematics and "mental processes" generally are categorized as "abstract ideas" that therefore are not directly patentable [2]. It is possible to patent something that contains an abstract idea, but it also has to have some "additional elements" that elevate it beyond merely claiming an abstract idea.

I suggest reading MPEP § 2106 [2] and looking at the first diagram given there titled "Subject Matter Eligibility Test for Products and Processes". That is the exact analysis that a patent examiner would use to determine if something is patentable subject matter or not (including for any claim with a prompt).

I strongly suggest that you talk to a lawyer if you want specific advice that answers your question directly. I'm not commenting on any copyright aspects.

[1] https://www.uspto.gov/web/offices/pac/mpep/s2104.html

[2] https://www.uspto.gov/web/offices/pac/mpep/s2106.html

Hmmm, I think of prompts more like recipes than an algorithm. Similar in both regards, but to the layman, I think prompts are becoming as common practice in daily lives as recipes.

Recipes can be trade secrets but not IP.(Unless it's a super rare circumstance that proves uniqueness in a 'Food Science' way).

I surely hope no one can patent a prompt. That would be an annoying world to live in.

AFAIK and IANAL.

Algorithms are considered mathematics and not patentable in themselves. So even if prompts are seen as algorithms, they would not be patentable. Prompts would have the usual copyright protections.

I presume though that some specific prompts may satisfy the criteria for patentability.

Recipes can be somehow a brand: the name "Original Sacher Torte" is protected and can only be used by Hotel Sacher, but the recipe itself isn't

But that's trademark rather than patent, isn't it? The rules are quite different for trademark.

its just an brand like you can register yourself one.

The federal circuit COA has never met a patent they don't like. That's all that matters. Statute text is irrelevant. The federal circuit openly ignores SCOTUS precedent about patents (e.g. Alice).

Excellent question - but I'm not a lawyer!

I want to add my question: How can something be a patent, if the result of the prompts are not always the same on each run? My understanding is: Only things can go into patents, which are "reproduceable"?

Maybe Im wrong?

The process is reproducible even if the outcome isn't always identical. Outside of computing and mathematics, real world processes never result in the exact same output - small variations in size, density, concentration, etc. will occur.

> if the result of the prompts are not always the same on each run?

In stabble diffusion, it seems to me that if we define a seed with the prompt, we get the same result, no?

Along those lines, if the model's output was actually deterministic, would the patent be bound to using the prompt with only one particular model since the output would be different, in some cases wildly different, with other models or even other versions of the same model?

My absolute wild guess as a layman is that prompts will at most get "trade secret" protection and won't be able to be copyrighted or patented.

You cannot patent a prompt.

Anyone who attempts to do so will either need to be secretive and bribey to pull it off and will then also have to hope that no one ever finds out because if they did, then in any legal proceedings that come due to said patent, (which is the entire point of a patent), the outcome will be that their patent is invalidated by the court and the case thrown out.

The point of a patent is to make it so that, while the patent lasts, no one else can use said patent without licensing it from you, and if they do so without the license they open themselves up to civil penalties that can exceed any potential profits from the illicit licensing.

1: Prompts have no value in and of themselves.

2: The ownership of raw AI generated materials is in a grey area. It might be public domain, it might be owned by the person who prompted it, we don't have clear hard guidelines on that.

3: AI is trained on a dataset of billions of pieces of other peoples work. Any novelty (novelty is a requirement for a patent) that comes from AI is at best an accident of the same variety as the colors produced by spilling paint, where it has taken a slice from one person and a slice from another person and mixed them together.

So, all in all, AI prompts and their output are almost certainly not patentable, at least as long as one sane person is in the pipeline somewhere.

> Anyone who attempts to do so will either need to be secretive and bribey to pull it off and will then also have to hope that no one ever finds out because if they did, then in any legal proceedings that come due

What do you mean by this? What aspects of their conduct would someone need to be secretive about?

A patent can be challenged in court. Newegg has had a couple of loud victories over this, and in some cases have challenged the validity of the patent, basically asking the court to review whether the original patent that is at the crux of the case should have been issued in the first place.

If the patent, on review in court, fails the originality, novelty, or lack of prior art review, the patent can be dissolved.

https://www.retaildive.com/news/newegg-the-bane-of-patent-tr...

https://www.newegg.com/insider/newegg-vs-patent-trolls-when-...

A patent filed on a prompt would most likely fail the novelty/prior art review phase of the patent application, so the only way a patent could succeed being granted in the first place would be through extreme secrecy and probably bribery of a patent agent to push the patent through.

All patents issued by the USPTO are public though. For you to get a utility patent you need to publicly share exactly what is done. This is supposed to be the reason patents exist in the first place. And in return for publicly sharing, you get exclusive rights for some period of time. In that regard there really isn’t any secrecy

Just because you have the patent does not mean you will win all infringement claims though, as you noted with those Newegg cases

I agree. Patents are only useful in a court of law, and as a deterrent to prevent deep pocketed outsiders from stealing your idea (out of fear that they would lose any infringement lawsuits and therefore a lot of money).

If your patent is crap, like the one that could feasibly be put on a prompt, then there is only the thinnest veneer of protection for your prompt idea, so it's pointless to make one if there is any value more than the 10-30 lawyer hours needed to take it to court and destroy it.

I’d assume prompts fall under copyright law, like code does, but if a lawyer can weigh in, that’d be interesting.

Maybe there has already been a case that’s been debated in court.