USPTO Recognizes Prompting as Sufficient Contribution for Patentable Invention

You Need the Accelerator and Steering Too, Not Just the Breaks

I'm delighted to share that the USPTO has just announced guidance that AI-assisted inventions are not unpatentable and that patent protection may be sought if a human provides a significant contribution to the invention (ie the Pannu factors) and - YES - being an awesomely inventive prompter can do the trick!

To determine inventorship of an AI-assisted invention, the guidance instructs examiners to apply the existing "significant contribution" test and determine if the human named on the patent made a significant enough contribution to qualify as an inventor.

In blog post today by Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, discusses and provides an example of how the guidance would apply, stating "...if an individual made a signification contribution through the construction of a prompt, that could be sufficient"!

The full official guidance by USPTO looks set to be released tomorrow at https://www.federalregister.gov/public-inspection/2024-02623/guidance-inventorship-guidance-on-ai-assisted-inventions but you can get pre-publication advance look at it right here: https://public-inspection.federalregister.gov/2024-02623.pdf

We owe much to Jerry Ma and his team for this timely and enlightened policy measure. So, Kudos Jerry!

My Take:

This sounds like the right legal result and more importantly it is the best outcome for leveraging the powerful new capabilities of generative AI to incentivize another sustained burst of innovation. I'm tracking (and sometimes contributing to) a number of forward looking policy measures designed to unleash the potential of this technology in other domains as well, and hope to be making more such posts soon.

There is a perhaps natural and expected tendency among many policy oriented people and lawyers to put on the breaks in the face of something truly novel, but the potent new vehicles of generative AI also, perhaps mostly, need active use of the steering wheel and the accelerator because to move forward sometimes you need to pump the gas and steer to where you want to be, not just hit the breaks. Successful navigation is a combination of these controls and you go nowhere with primary obsession on applying the breaks to remain parked in the past as new events pass you by. I hear a lot of breaks from too many people who seem rather checked out to the other, frequently more important, combinations of controls at our disposal, such as propulsions and steering and a destination where we are navigating to that's better than where we came from.

Let's drive forward to the goal.