Earlier this month, the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register providing guidance regarding the proper presentation of prophetic examples and working examples in a patent application. According to the guidance, the proper presentation of prophetic and working examples requires them to be described in a manner such that they are clearly distinguished.
Prophetic examples (a.k.a., paper examples) describe “reasonably expected future or anticipated results.” In other words, they describe experiments or results that have not in fact been performed or obtained. In contrast, working examples describe work that was performed or experiments that were conducted, which yielded actual results. According to the Manual of Patent Examining Procedure (MPEP), prophetic examples should not be described using the past tense. See M.P.E.P. 608.01(p), subsection II. Rather they may be written in future or present tense.
Written Description and Enablement Requirements
According to the guidance, prophetic examples may be used to meet the written description requirement and the enablement requirement. Also, a patent application does not need to provide a guarantee that a prophetic example actually works. The presence of a prophetic example alone is a sufficient basis for establishing that the specification is not enabling. However, when a prophetic example is described in a patent application in a manner that is ambiguous or that implies that the results are actual, claims of the patent applications can be rejected for failing to satisfy the enablement and/or written description requirements of 35 U.S.C. 112(a).
Applicant’s Duty of Disclosure
According to the guidance, knowingly describing in a patent application prophetic examples as working examples is fraud. For example, “[k]nowingly asserting in a patent application that a certain result ‘was run’ or an experiment ‘was conducted’ when, in fact, the experiment was not conducted or the result was not obtained is fraud.”
Given the notice’s emphasis on the importance of clearly distinguishing prophetic and working examples, instead of solely relying on grammatical tense for the distinction, expressly labeling an example in a patent application as either a prophetic example or a working example may be beneficial in certain situations.