What are the risks of using prophetic examples in patent applications?

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.

While prophetic examples can be valuable in patent applications, they also come with certain risks that applicants should be aware of:

• Potential for Inequitable Conduct: If prophetic examples are not clearly distinguished from working examples, it could be seen as an attempt to mislead the USPTO.
• Enablement Challenges: Overly speculative or implausible prophetic examples may fail to satisfy the enablement requirement.
• Prior Art Issues: Prophetic examples may inadvertently disclose ideas that could later be used as prior art against the applicant or others.
• Credibility Concerns: Excessive use of prophetic examples without supporting data may raise doubts about the invention’s viability.

The MPEP 2164.02 cautions: “Care should be taken to ensure that prophetic examples are not presented in such a way as to mislead the reader into concluding that they are actual examples.” It’s crucial to clearly differentiate prophetic examples and ensure they are reasonable based on the known scientific principles and the state of the art.