Notice Alert: Properly Presenting Prophetic and Working Examples in a Patent Application

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On July 01, 2021, the United States Patent and Trademark Office (USPTO) published a Notice requiring prophetic examples and working examples to be distinguished, at least, by using different tense in order to satisfy the written description and enablement requirements and comply with Applicant’s duty of disclosure.

1. What’s the difference between prophetic examples and working examples?

  • Prophetic examples are experiments that Applicant described in a patent application but did not actually conducted. Therefore, the results described in prophetic examples are predicted rather than observed.
  • Working examples describes work already performed or experiments conducted. Therefore, they are description of actual results.

2. Why prophetic examples and working examples need to be distinguished?

In order to satisfy the written description and enablement requirements (35 U.S.C. 112(a)), the invention should be described in such a way that one skilled in the art will be able to practice it without an undue amount of experimentation, according to MPEP 2164.02.

  1. Prophetic examples may not be operative. Although embodiments of some inventions are straightforward enough to not include any examples to meet the requirements of 35 U.S.C. 112(a), examples are indispensable parts of specification in many applications. With regard to working examples, detailing everything the inventors actually did would guarantee the achieving of an operative embodiment. When it comes to prophetic examples, things become tricky. It is true that the application does not need to provide a guarantee that a prophetic example actually works. (Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 1310 (Fed. Cir. 2015)) However, it does not mean the examiner will let it slip past without even questioning, especially when the examiner has good reason to suspect the adequacy of the description.
  2. The description of prophetic examples may be too ambiguous. When describing prophetic examples, Applicants have a tendency to avoid information that they are not confident in its operativeness. By leaving out potentially uncertain details, Applicants often describe the prophetic examples more ambiguous than working examples. Sometimes, the description of prophetic examples is so ambiguous that the examiner believes it cannot be practiced by one of ordinary skill in the art without undue efforts. Then, the adequacy of the description is problematic.
  3. The Applicants may unintentionally fail their duty of disclosure by using past tense in describing prophetic examples.

Applicants are quired to accurate information in a patent application. However, the use of past tense means the experiment has been done is the past, which is not the case of prophetic examples. Therefore, describing prophetic examples in past tense is considered to be an intent to mislead the others to believe something the inventors did not do is actual. (Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d. 1354, 1367 (Fed. Cir. 2003))

3. Drafting tips.

To avoid introducing inaccurate or ambiguous prophetic examples in to the prosecution record, the USPTO suggested an easy-to-take step in the July 01, 2021 Notice: describe prophetic examples only in future or present tense, which is also a well-defined requirement by MPEP 608.01(p), while working examples may be described in past tense. Moreover, it is also recommended to explicitly label examples as prophetic or separate prophetic examples from working examples by other means, if they are not actually carried out.

As for the adequacy and operativeness, it is not fair for Applicants to guarantee something they did not try. However, Applicants may, at least, eliminate any doubt that the Examiner may have, by detailing reasons why they believe the results will be as they expected. Even when a rejection is mailed, it is still not too late for Applicants to actually conduct the experiment and present the results to the Examiner.

In summary, providing adequately described and accurate examples is essential and desirable in many cases. When prophetic examples have to be used to help with justifying the scope of the claims, Applicants should make it clear to readers that these examples are prophetic.

Opinions and conclusions in this post are solely those of the author unless otherwise indicated. The information contained in this blog is general in nature and is not offered and cannot be considered as legal advice for any particular situation. The author has provided the links referenced above for information purposes only and by doing so, does not adopt or incorporate the contents. Any federal tax advice provided in this communication is not intended or written by the author to be used, and cannot be used by the recipient, for the purpose of avoiding penalties which may be imposed on the recipient by the IRS. Please contact the author if you would like to receive written advice in a format which complies with IRS rules and may be relied upon to avoid penalties.

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