Can both working and prophetic examples be used in the same patent application?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Yes, a patent application can include both working examples and prophetic examples. However, it’s crucial to clearly distinguish between the two types. The MPEP 2164.02 states:

“An example may be “working” or “prophetic.” A working example is based on work actually performed. A prophetic example describes an embodiment of the invention based on predicted results rather than work actually conducted or results actually achieved.”

When using both types of examples:

• Clearly label or indicate which examples are working and which are prophetic.
• Use appropriate tenses: past tense for working examples, present or future tense for prophetic examples.
• Ensure that the combination of examples adequately supports the enablement requirement for the claimed invention.

By properly distinguishing between working and prophetic examples, inventors can provide a comprehensive description of their invention while maintaining transparency about the status of their research and development.