How should prophetic examples be written in patent applications?
Prophetic examples in patent applications should be written in the present tense to distinguish them from working examples. The MPEP 2164.02 states: “Paper examples should be described in the past tense. Prophetic examples (paper examples describing prophetic embodiments or simulations) should be written in the present tense.” This distinction in tense helps readers and examiners…
Read MoreWhat are working and prophetic examples in patent applications?
Working and prophetic examples are two types of examples that can be included in patent applications: Working examples are based on work actually performed. Prophetic examples describe embodiments of the invention based on predicted results rather than work actually conducted or results achieved. As stated in MPEP 2164.02: “An example may be ‘working’ or ‘prophetic.’…
Read MoreHow do working and prophetic examples relate to the enablement requirement?
Both working and prophetic examples play a crucial role in satisfying the enablement requirement for patent applications. The MPEP 2164.02 explains: “The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without an undue amount of experimentation.”…
Read MoreWhat is the difference between working examples and prophetic examples in patent applications?
Working examples and prophetic examples serve different purposes in patent applications: Working examples are based on actual experiments or results that have been carried out. Prophetic examples describe anticipated results of experiments or procedures that haven’t been performed yet. According to MPEP 2164.02: “An example may be “working” or “prophetic.” A working example is based…
Read MoreHow does the USPTO handle prior art references with predicted properties or prophetic examples?
The USPTO treats prior art references with predicted properties or prophetic examples as potentially valid prior art. According to MPEP 2121.04: “A reference that contains a detailed description of a specific embodiment, even if the embodiment has not been prepared or tested, may be sufficient to anticipate or render obvious a claimed invention.” This means…
Read MoreWhat are the risks of using prophetic examples in patent applications?
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…
Read MoreHow do prophetic examples affect the enablement of a patent disclosure?
Prophetic examples, which are conceived but not yet made embodiments, do not necessarily make a patent disclosure nonenabling. The MPEP 2164.08(b) cites the Atlas Powder case, stating: “Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1577, 224 USPQ 409, 414 (Fed. Cir. 1984) (prophetic examples do not make the…
Read MoreCan prophetic examples be used to satisfy the enablement requirement?
Yes, prophetic examples can be used to satisfy the enablement requirement in patent applications. The MPEP 2164.02 provides guidance on this: “Compliance with the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, does not turn on whether an example is disclosed. An example may be “working” or “prophetic.”” However, it’s…
Read MoreHow should experimental data and examples be presented in a patent application?
When presenting experimental data and examples in a patent application: Ensure accuracy of all statements and evidence Clearly distinguish between actual results and predicted results Use proper tense: past tense for actual experiments, present or future tense for prophetic examples Label examples as prophetic or working examples to avoid ambiguities MPEP 2004 advises: “Care should…
Read MoreWhat issues can arise from improperly presented prophetic examples?
Improperly presented prophetic examples in patent applications can lead to serious issues, including questions about the adequacy and accuracy of the disclosure, and potential inequitable conduct charges. The MPEP 2164.02 warns: “When prophetic examples are described in a manner that is ambiguous or that implies that the results are actual, the adequacy and accuracy of…
Read More