by Dennis Crouch
Many patent applications are not fully reduced-to-practice by the time the patent application is filed. Although reduction-to-practice is a required element of invention, the Courts and Patent Office have long permitted the filing of a patent application to constructively satisfy the RTP requirement. Still, the application must fully satisfy the disclosure requirements of 35 U.S.C. 112(a), namely written description, enablement, and best mode.
A patent specification will typically include a series of examples, embodiments, use-cases and/or experimental results. In this post, I’ll refer to these collectively as “examples.” One way of categorizing the examples is to divide between actual “working examples” and predicted “prophetic examples.” As you might guess, working examples are typically more compelling and indicative that the invention will actually work as claimed. But, prophetic examples also have their use and are absolutely permissible. Although I have not measured this, I expect that the vast majority of patentees rely on prophetic examples to some extent in order to expand the scope and depth of their disclosure. Thus, even if the patentee has reduced the invention to practice and explained the RTP in a working example, the specification may also provide a set of prophetic examples with differing arrangements, elements, and outcomes. Because of their differences, the courts and USPTO have called on patent applicants to take care in distinguishing between the two in their patent applications.
My definition of prophetic example is broad: I’ll pause here to recognize that my definition of prophetic examples is broad. Traditionally, many have focused the “prophetic example” doctrines only on reports of experimental results that are typically found in chemistry and biology related patents. In her Prophetic Patents article, Professor Janet Freilich primarily limited her analysis to “experiments that report protocols that were not actually conducted and describe results that are made up, or prophesized.” Using that definition and an automated search, Freilich found about 50% of chem/bio patents include prophetic examples. The MPEP has a broader definition that more closely parallels mine: “A prophetic example describes an embodiment of the invention based on predicted results rather than work actually conducted or results actually achieved.” MPEP 2164.02. Basically, if you are describing something that has not been actually reduced to practice, it is a prophetic example.
The USPTO has published a new notice to patent applicants with the same reminder cautioning applicants to distinguish between working and prophetic examples:
The USPTO is reminding patent applicants of their duty to ensure that patent applications are written in a manner that clearly distinguishes prophetic examples with predicted experimental results from working examples with actual experimental results. Prophetic examples, also called paper examples, are typically used in a patent application to describe reasonably expected future or anticipated results. Prophetic examples describe experiments that have not in fact been performed. Rather, they are presented in a manner that forecasts simulated or predicted results. In contrast, working examples correspond to work performed or experiments conducted that yielded actual results.
Notice: Properly Presenting Prophetic and Working Examples in a Patent Application, PTO-P-2021-0020 (Fed. Reg. July 1, 2021) (“Notice”). The notice indicates that examiners generally do not question disclosed test results unless there is a reasonable basis to do so. But, prophetic examples that fail a reasonableness test will be rejected for insufficient disclosure (enablement and/or written description).
In addition, applications that include prophetic examples should make clear whenever the example is prophetic. Otherwise, the application may be deemed to include a misleading statement in violation of the applicant’s “duty of candor and good faith in dealing with the Office.” 37 C.F.R. 1.56.
QUESTION for PATENT DRAFTERS: When you describe various embodiments in your patent application, do you tell the PTO which ones are working-examples (actually reduced to practice) and which ones are prophetic?
— Dennis Crouch (@patentlyo) June 30, 2021
One way to disclose prophetic examples is to expressly label them as “Prophetic Examples.” “It is a best practice to label examples as prophetic or otherwise separate them from working examples to avoid ambiguities.” Notice. The PTO has also deemed it appropriate to use future-tense language in describing prophetic examples and past tense for working examples. “When drafting a patent application, care must be taken to ensure the proper tense is employed to describe experiments and test results so readers can readily distinguish between actual results and predicted results.”
The USPTO Notice focuses on prophetic examples stemming from experimental results, and thus remains to be seen whether the requirements will be practically extended to situations involving prophetic embodiments and use-cases presented without any experimental results. One approach for patent applicants is to write everything as if it is a prophetic example.